The EPO publishes the first Unitary Patent Guide

Over recent months, it has seemed to many that the introduction of the Unitary Patent and the start of the Unified Patent Court is something that we may not see for a long time, or perhaps ever. However, the EPO appears not to share this view as it has just published the 1st Edition of the Unitary Patent Guide.

The UK Government confirmed in 2016 that, despite Brexit, it would be pushing ahead with ratification of the Agreement on a Unified Patent Court (the UPC Agreement). At that time, it was hoped that the UPC could open its doors as early as December 2017, with the first Unitary Patents being granted in early 2018. However, in June 2017 it was indicated that the December 2017 deadline could not be maintained – pushing the earliest start date back into 2018. This was closely followed by a challenge to the UPC Agreement before the German constitutional court which put the German ratification process on hold, and with this came doubts as to whether we would see a Unitary Patent in the foreseeable future.

Despite these hurdles, the European Patent Office has just released the Unitary Patent Guide – a guide to obtaining, maintaining and managing Unitary Patents. The full Guide can be downloaded from the EPO here. Clearly, the EPO is pressing ahead in the expectation that it will be able to grant Unitary Patents in the not too distant future.

The Guide does not contain any great surprises, but does start with a nice overview of the concept of the Unitary Patent, emphasising that this is an alternative to the existing options of national patents granted by national patent offices and national validations of European patents which can have some benefits to patent owners.

The remainder of the Guide is directed to the mechanisms for obtaining a Unitary Patent, renewing a Unitary Patent, the information that will be available about Unitary Patents that have been granted, who can act before the EPO with regard to a Unitary Patent and how to record changes of ownership and licences.

Largely, the Guide mirrors the way that the EPO currently handles European patent applications. For example, for renewal fees, the fee will be due on the last day of the calendar month containing the anniversary of the filing date, and there will be a 6 month grace period within which the renewal fee (with a 50% surcharge) can be paid with no loss of rights. As with renewal fees for European patent applications, it will not be possible to pay the renewal fee more than three months before this is due. It is good to remember that the annual renewal fee for a Unitary Patent has been set to be at around the same level as the total of the current renewals for UK, France, Germany and Netherlands. This means that a significant saving could be made on renewal fees using a Unitary Patent compared to national validations of a European Patent in more than four countries.

One of the steps for requesting unitary effect is to file a translation of the entire specification into a second European Union official language (which must be English if the patent was not in English). The Guide sets out the €500 compensation towards the cost of providing the required translation for certain proprietors, for example small and medium sized enterprises and non-profit organisations, who are based in an EU Member State and where the original European patent application was filed in a language other than English, French or German.

The existing European Patent Register will incorporate the Register for Unitary Patent Protection, and documents relating to the Unitary Patent will be available from the online register in the same way as application documents are. There will, however, be no further official publication (for example the European patent will not be republished as a Unitary Patent), although the EPO has indicated that a certificate will be issued to proprietors once the unitary effect has been registered.

With regard to changes of ownership and licences, it is worth remembering that since a Unitary Patent is a single right, it is only possible to transfer the patent as a whole, and that it is not, for example, possible to assign the Unitary Patent for only one or a number of individual Member states. On the other hand, it is possible to license a Unitary Patent as a whole or on a country-by-country basis, subject to any other legal limitations, such as competition law requirements.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.