European patent with unitary effect: soon it will be time to choose !

The European patent with unitary effect will come into force in a few months. Now is therefore time for applicants for European patents to define their strategy.

Paris, March 1, 2022 – The European patent with unitary effect will come into force in a few months. Now is therefore time for applicants for European patents to define their strategy.

Why request the unitary effect?

The unitary effect has been designed to reduce the costs of validation and maintenance of European patents.

On the one hand, after a transitional period of at least six years, no translation of the European patent will be required for the patent to be effective in the territory of the participating Member States.

On the other hand, a single annual fee will be required for the maintenance of the patent in the territory of the participating Member States. The amount of this fee has been set at the sum of the fees applied in France, Germany, the United Kingdom and the Netherlands in 2015.

It should be noted that this unitary effect is optional: applicants will still be able to choose to validate their European patent nationally.

In particular, it will be wise to compare costs according to the territories of interest and the expected duration of maintenance, using the Sim’UP tool developed by Regimbeau.

In any case, for States that have not ratified the Agreement on a Unified Patent Court, the national validation system will continue to apply.

How to request the unitary effect?

The unitary effect must be requested within one month after the publication of the mention of grant, which is a very short period. It is therefore recommended to consider choosing between the unitary effect and national validations as of now.

No fee is required. However, a full translation into English, or another language of the European Union if the patent is in English, will be required for at least six years. 

The unitary effect will only be available for European patents granted after the entry into force of the Agreement on a Unified Patent Court.

However, it will be possible to anticipate certain steps for patent applications for which the European Patent Office has notified intention to grant (notification under Rule 71(3) EPC) as soon as the Agreement is ratified by Germany:

  1. file an early request for unitary effect, and/or
  2. request a delay in issuing the decision to grant the European patent until after the entry into force of the Agreement.

For patent applications that could be granted before the applicability of these early measures, it may be possible to consider delaying the grant procedure.

It should be noted that the unitary effect cannot be obtained if the patent has different owners in different participating Member States or if it includes several different sets of claims.

What are the consequences?

The European patent with unitary effect can coexist with a national patent for the same invention, which can secure protection of the most important inventions.

Whereas the European patent with unitary effect can be licensed in all or part of the territory of the participating Member States, it can only be assigned for the whole of this territory.

Finally, by choosing the unitary effect, the applicant submits its patent to the exclusive jurisdiction of the Unified Patent Court (UPC). We will provide more information regarding this new court in a future article.

Regimbeau’s teams are at your disposal to define the appropriate strategy for your European patent portfolio.

1 To date, the entry into force is expected on October 1, 2022.
2  On the date of entry into force, there will be 17 participating Member States: Austria, Germany, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Luxembourg, Malta, the Netherlands, Portugal, Sweden, Lithuania, Latvia, Slovenia

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