Request for unitary effect of European patent

European patents with unitary effect registered on or after September 1, 2024 will take effect in the 18 EU member states of the UPC Agreement. The 18 countries that have ratified the agreement and participated in the unitary patent are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, Sweden. The request for unitary effect must be submitted to the EPO in Form 2006A within 1 month after the European patent is published.

However, the European granted patent must be validated and maintained separately in each country where the patent owner wishes to validate it. This is a complex and potentially very expensive process: validation requirements vary from country to country, which can result in high direct and indirect costs, including translation fees, validation fees (i.e. the cost of publishing the translation in certain member states), and related agency fees, annual fees and attorney services. The unitary patent eliminates the need for complex and expensive validation procedures in each country.

• There are no fees for filing and examining an application for unitary effect or for registering a Unitary Patent.
• After a 6-year transition period, post-grant translations will no longer be required. During this period, the required translations are for information purposes only and have no legal effect.
• For SMEs, natural persons, non-profit organizations, universities and public research organizations based in the EU, the new compensation scheme will cover the costs associated with the translation of patent applications if they are filed in an official EU language other than English, French or German. Applicants will receive a one-time compensation of €500 when the Unitary Patent is registered.
• The Unitary Patent is not subject to the current fragmented renewal fee system: there is only one procedure and one deadline, all payments are payable in Euros, and there is no obligation to use an agent.
• The European unified patent annual fee is equivalent to the sum of the four countries with the highest annual fees for European patents, and the total fee for the first ten years is less than 5,000 euros. Patent owners who submit a rights license statement to the EPO can obtain a 15% annual fee reduction. The annual fee late payment fee is 50% of the annual fee for that year.
• The transfer, licensing and other rights of the unified patent no longer need to be registered country by country in the national patent register, but only need to be registered once in the unified patent protection register centrally managed by the European Patent Office.

The Unitary Patent provides truly unitary protection, as substantive patent law – in particular the rights conferred by the Unitary Patent, any limitations on those rights and remedies in case of infringement – has been harmonized in the UPC Agreement.

If all requirements are met, the EPO will register a Unitary Patent for the relevant European patents. The Unitary Patent is unitary, has the same effect in all participating Member States, can be restricted, transferred, revoked or invalidated in all participating Member States, and can also be licensed in all or part of the territories of participating Member States.

It is not possible to obtain "dual" protection of an invention by means of national validation, both as a European patent and as a unitary patent. If a European patent with unitary effect has been registered and extended to a participating Member State, the European patent will be deemed not to have been validated as a national patent in its territory on the date of publication of the grant notice in the European Patent Bulletin.

How to obtain a European Unitary Patent (Requirements):

In order to be eligible for registration as a Unitary Patent, a European patent must be granted with the same set of claims in all 25 participating Member States. It is therefore important not to revoke the designation of any of the 25 participating Member States, as this would exclude the possibility of obtaining a Unitary Patent. Furthermore, a European patent should not contain different claims in any one of the participating Member States, as this would also prevent the EPO from registering a Unitary Patent.

• The proprietor of a European patent must submit a formal "request for unified effect" in writing to the EPO within one month after the grant of the European patent, using a special form, Form 7000. This deadline cannot be extended. The applicant must be the proprietor mentioned in the European Patent Register on the date of filing the request for unified effect or, at the latest, on the date of registration of unified effect.
• The request for a European Unitary Patent needs to include a translation of the European patent specification. If the language of the proceedings is French or German, a full English translation of the European patent specification must be submitted; if the language of the proceedings is English, a full translation of the European patent specification into another official language of the European Union must be submitted.
• Small and medium-sized enterprises, natural persons, non-profit organizations, universities and public research organizations with their residence or principal place of business in an EU Member State are eligible for reimbursement of translation costs. To be eligible for reimbursement, applicants must file their European patent applications in an official EU language other than English, German or French.
• An application for unitary effect can be withdrawn as long as the EPO has not yet completed the registration of the unitary effect or refused the application.
• If the patentee fails to meet the formal requirements of the European Unitary Patent, he may make corrections within a period of one month, which cannot be extended. No request for restoration of rights may be made during this period.

• Documents cannot be submitted by fax, email, floppy disk or similar means such as telex, telegram, etc. Any document submitted after the application for unified effect, except for annexes, must be formally signed. The name and position of the signatory must be clear. If there is no signature on the document, the EPO will require it to be signed within the prescribed time limit. If it is signed within the prescribed time, the document will retain the original receipt date; otherwise, the document will be deemed not to have been received.
• If the request for unified effect is filed one month after the publication of the European patent grant in the European Patent Bulletin, a request for re-establishment of rights may be filed in relation to the request for unified effect. However, the request for re-establishment of rights must be filed within two months after the expiration of the one-month period. Furthermore, the request for unified effect must be filed and the fees paid within the same two-month period.
• The payment date for the annual fee for the unitary patent is the same as the payment date for the European patent application, so the payment date for the annual fee for the unitary patent for the following year is the last day of the month with the anniversary of the European patent application date that led to the unitary patent. Annual fees cannot be paid validly within three months before the due date. If the annual fee is not paid on time, it can still be paid within 6 months after the due date, but a 50% late payment fee must be paid.
• If the annual fees are not paid within 6 months, the EPO will issue a notice of loss of rights under the unitary patent. This notice does not constitute a decision within the meaning of Article 32(1)(i) of the Unitary Patent Act and therefore no action can be brought before the UPC against it.
• Three-month safety period under Rule 13(4) UPR: If the applicant is required by a notification issued under Rule 13(4) UPR to pay the annual fees within three months of receipt of the notification, he or she may still pay the annual fees within three months in accordance with the notification without any additional fee. This does not affect the six-month grace period provided for in the unitary patent: this period still starts from the due date. However, if the annual fees are paid within the three-month safety period, no late payment fee will be charged.

• If the annual fees are due after the date of publication of the European patent in the European Patent Bulletin but before or on the date of the unified effect of the registration with the European Patent Office, the due date is changed to the date of the notification and the renewal fee can be paid within three months from the date of the notification without additional fees. If the renewal fee is not paid within these three months, Rule 13(3) applies, i.e. the renewal fee and additional fees can still be paid within six months from the date of the notification referred to in Rule 7(1).