European Patent with Unitary Effect (EP-UE)

The current 17 participating member states are:

• AT (Austria)
• BE (Belgium)
• BG (Bulgaria)
• DE (Germany)
• DK (Denmark)
• EE (Estonia)
• FI (Finland)
• FR (France)
• IT (Italy)
• LT (Lithuania)
• LU (Luxembourg)
• LV (Latvia)
• MT (Malta)
• NL (Netherlands)
• PT (Portugal)
• SE (Sweden)
• SI (Slovenia)

It is expected that further EU member states will  join the UPC system in the years to come. In this case and from the date of their ratification onwards, any newly requested EP-UE will also extend to these states, but existing EP-UEs retain their current territorial scope of protection. Currently, only three member states, i.e. Poland, Spain, and Hungary, have positively indicated that they do not intend to join the UPCA. Other EU member states seem to have taken a wait-and-see attitude.

Handbook Chapter

The EP-UE is obtained using the existing European patent application procedure via the EPO. Once the mention of grant has been published by the EPO, the applicant has one month to request unitary effect and to submit a complete translation of the patent specification into another official language of the EU (if the patent was in English), in which case the relevant European patent will automatically become effective in all states participating in the UPC system at the time the request is filed. Additionally, the patentee can obtain protection in all other EPC member states (or extension states) where there is no EP-UE by way of national validation, in the same manner as in the past. In other words, one and the same granted European patent can have unitary effect in all UPC participating states and be validated in some or even all remaining EPC member states by way of national validation.

If no request for unitary effect is filed within one month of grant of the European patent, the European patent will be a mere traditional European (bundle) patent, which becomes effective only in those EPC countries where the requirements for validation, if any, have been fulfilled.

Handbook Chapter

An EP-UE can be filed and granted in all official languages admissible at the EPO, i.e. in English, German or French. Most European patents are filed in English. EP-UEs filed in English will have to be translated into another official language of the EU, whereas EP-UEs filed in German or French will have to be translated into English.

Annuities for EP-UEs  have to be paid centrally at the EPO as there will not be fees payable to national patent offices, nor will there be any need for national validation.

Those states who ratify the UPCA at a later point in time will not be added subsequently to the geographical scope of protection of an existing European patent with unitary effect. In other words: different “generations” of EP-UEs will have a different scope of geographical protection.

The following example illustrates this: Patentee P obtained an EP-UE right after the start of the UPC system. At the time of registration of the EP-UE, 17 states were officially participating in the new system. Within a year thereafter, 3 further states ratify the UPCA and join. However, P’s EP-UE will only cover the 17 states that were participating in the UPC system from the beginning. The 3 states that joined within the following year, i.e. after the request for and registration of the unitary effect of P’s EP, will not be added to the coverage of that EP-UE. To obtain protection in any countries other than these 17 participating states, P would have to validate its patent nationally in such EPC member states in the same manner as for any other European patent for which no unitary effect has been requested.

This is a more difficult question than it may appear at a first glance, because the costs of a traditional European patent vary very significantly depending on the number of countries where the patent has been validated. What is clear, however, is the following: Contrary to the traditional European patent, only one annual renewal fee must be paid centrally to the EPO for an EP-UE. The total official fees of an EP-UE for 20 years are about 45,000 EUR.

The EP-UE is more expensive than a traditional European patent that has been nationally validated in Germany, France and Italy (currently the most popular validation states in the EU) and is approximately as expensive as a classic European patent validated in Germany, France, Italy and the Netherlands (four member states). Naturally, the cost advantages of the unitary patent become more prominent, if the number of UPC member states in which protection would have been sought for a traditional European patent increases.

It is noteworthy that the renewal fees were calculated still in the expectation that the UK would join the UPC system. Despite the withdrawal of the UK from the new system, the renewal fees have not been reduced, even though the value of the EP-UE has become lower, given that protection in the UK will now have to be sought (and paid) for separately by way of national validation of the European patent in the UK.

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No, the existing European patent system governed by the European Patent Convention (EPC) remains in force. That is, EP-UEs will co-exist with traditional European bundle patents in the foreseeable future. The only real change will be that once the transitional period of Art. 83 (7 + possibly further 7 years) has expired, any European patent (application) that has not been opted out until then will be under the exclusive jurisdiction of the UPC.

Thus, it will remain possible to combine both systems. An EP-UE can be chosen for the participating states and a regular European patent can be selected to cover the EPC contracting states that are not part of the new system (e.g. Spain or Switzerland). Alternatively, all EPC member states can still be covered by a traditional European Patent that is validated in these states. Only the venue for litigation of traditional European patents will change in the UPCA member states, unless the patent is opted out from the jurisdiction of the UPC.

There is no legal definition in the UPCA or EPC on what double patenting means. In principle, the issue of double patenting arises when the same invention is protected by two patents of the same proprietor, claiming the same priority date or filed on the same date. In most patent systems, two patents cannot be granted to the same applicant for one and the same invention. According to Art. 139(3) EPC it is up to the member states to prescribe whether and on what terms an invention disclosed both in a European patent application and a national application or patent having the same date of filing (or priority, where applicable) may be protected simultaneously by both applications or patents.

An overview by the EPO on the question of double patenting in EPC states is provided here:
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The UPCA does not mention the issue of “double patent protection” by a EP-UE and a national patent for the same invention, but Art. 139(3) EPC also applies to EP-UEs. Therefore, for both traditional European patents and EP-UEs, it is a matter of national law to allow or reject such double protection.

The newly amended Art. II § 8 of the German Act on the International patent treaties ("IntPatÜG") permits double protection for (i) national patents and not opted-out European patents, as well as (ii) national patents and EP-UEs (Art. II § 8 IntPatÜG used to prohibit double patent protection for a German national patent and a European patent designating Germany). This amendment will have an impact on the future filing and litigation strategy allowing patentees more flexibility. Patent proprietors for whom the German market is important, may find the option valuable to obtain an additional German patent in addition to an EP under the jurisdiction of the UPC so as to secure themselves from the immediate effects of a possible central revocation attack under the UPC. In principle, the German patent can still be enforced and is formally independent. German courts may be expected to pay careful attention to UPC decisions, but will most likely not follow a decision by the UPC blindly.

Interestingly, France has implemented legal changes similar to the ones in Germany allowing double patenting for national patents and not-opted out European patents and for EP-UEs. Portugal has also amended its patent law and simply deleted the previous provision that expressly prohibited double protection for a national and European patent. Although the Unitary patent was not explicitly addressed by the legal changes in Portugal, it is assumed that double protection will be possible for both European patents and EP-UEs, since Art. 139 EPC generically covers all European patents, including the EP-UE. 

Other UPCA member states that currently allow double patenting for a national and European patent are Austria, Denmark, Sweden and Finland. It is expected that these rules will apply to EP-UEs as well.

Handbook Chapter

The patent portfolio should be analysed in order to identify those patents that are to be opted out from the exclusive jurisdiction of the UPC (see "On what basis will I decide whether to opt out some or all my patents?" for more information). This also applies to pending European patent applications. Additionally, ownership issues with existing European patents should be assessed since co-owners must opt out jointly (see "Who can opt out?")

Pending European patent applications can result in an EP-UE. Once the decision of grant of the pending application has been published, patentees have one month to request the unitary effect and to submit a translation of the entire patent specification (for more information see "How do I apply for an EP-UE?").

In contrast, traditional European patents that have already been granted and for which a request for unitary effect can no longer be filed remain traditional European patents and need to be validated in each state of interest.

Notwithstanding the above, once the UPCA transitional period (at least seven years) has expired without an opt-out having been declared for a given European patent or patent application, this European patent or pending application will be subject to the exclusive jurisdiction of the UPC within the UPC territory. As no opt-out will be possible after expiry of the transition period, gradually all European patents will come under the exclusive jurisdiction of the UPC (but only within the UPC territory).

Yes, because the existing European patent system governed by the EPC remains fully in force. That is, even after the expiry of the transitional period, a patentee will have the choice to request an EP-UE or to validate the European patent as a traditional bundle patent. For all EU member states that do not participate in the new system (e.g. Spain, Poland), or where the UPCA has not yet entered into force (e.g. Ireland, Greece), the European patent can only be validated nationally anyway. The same applies for all EPC member states (e.g. the UK, Switzerland or Turkey) that are not EU member states as these countries cannot participate in the new system.

Of course, it is still possible to obtain national patents in each European country separately, but not necessarily in parallel to an EP-UE (see "Are there any rules on the prohibition of double protection?").

For cost reasons this question might be particularly relevant for companies that normally validate at least some of their European patents in a greater number of EU countries.

As from January 1, 2023 the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC exists so that the mention of the grant is published in the European Patent Bulletin on or immediately after June 1, 2023 - the date of entry into force of the UPCA - in order to allow the registration of unitary effect for that European patent.

EPO - Decision of the President of the European Patent Office dated November 11, 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC:
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a102.html

Also as of January 1, 2023 , the EPO has been accepting requests for unitary effect filed prior to the date of entry into force of the UPCA. Such early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been dispatched.

Rule 71 (3): 
https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/r71.html

EPO -Notice from the European Patent Office dated November 11, 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility to file early requests for unitary effect:
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a105.html