FAQ’s
What is a unitary patent (UP)?
It is a single patent granted by the European Patent Office (EPO) covering all European Union (EU) states that have ratified the relevant agreement at the date of grant of the patent. It is enforceable and revocable as a whole across all the participating states by a new Unified Patent Court (UPC). It is (for the foreseeable future) only open for EU states to participate, so it is like an EU patent that exists alongside other patents in which the European Patent is granted (such as the UK, Switzerland, Norway and Turkey) and other EPO states that are not EU states. It can also exist alongside patents granted by the EPO and validated in EU states that are not participating, such as Spain and Poland.
What are the similarities and differences to a European patent (EP)?
Prosecution of UP applications will be the same as for European patent (EP) applications. They can be prosecuted through the EPO by Maucher Jenkins European Patent Attorneys in our offices in the UK or in Germany. The differences begin after grant. Whether, at the time of grant, the UP is requested is an option open to applicants.
The “traditional” validation route is still available. An EP application gives rise to separate national patents in each state in which the EP is validated. It can be validated in up to 38 states (although it is rare to do so in all the available states). The resulting national validations are subject to separate renewal fees and translation requirements (including the relaxations permitted by the London Agreement) and can be enforced and/or invalidated separately. This will remain the option for UK, Spain, Switzerland and other non-EU states that are EPO Member States. It will also remain the option for a number of EU states who have not yet ratified the relevant agreements, until such time as they do.
Conversely, a UP is a single patent covering all states signed up to the new system at the date of grant. At the start of 2022 there are 17 such states. For one patent covering all these states, a single annual renewal fee will be payable. The required translations are modified. A single translation may be filed centrally at the EPO, rather than at the individual national offices. The patent can be enforced or invalidated (before the new court) with effect across all states which it covers.
How do I get a UP?
A UP is obtained by first applying in the normal way for a European patent (directly or through the PCT system), and requesting unitary effect within 1 month of the date of grant (using EPO Form UP7000). The request for a unitary patent may be filed before grant.
During a transitional period of, initially, six years, a translation will have to be filed with the EPO. Where the language of the original application is English, a full translation of the specification of the European patent into one other official language of the EU is required. Spanish is likely to be a popular choice, as the text can be re-used for validation in Spain. Where the original application is in German or French, a translation into English will suffice.
What if an EP application is due to grant before the unitary patent system begins?
The grant date of your patent at the EPO may be delayed on request so as to push the grant beyond the start of the new system (expected to be September 2022) and make the UP an option. This option will be available from a date yet to be announced (expected to be in May 2022) and for 4 months before the start of the system. It can be requested simply by filing EP Form 2025 and there is no fee. If you have already received notice of intention to grant a European patent and the deadline to respond is imminent, you may wish to speak to your Maucher Jenkins patent attorney about other options to delay so as to benefit from this facility.
What states does a UP cover?
As of April 2025, a UP covers the following 18 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia and Sweden.
What about non-contracting states when a UP has been requested?
An EP application becomes a UP, if requested, in the states covered by the UP at the date of grant. The EP may be validated in non-contracting states, as for a standard European patent. Validation in the UK, for example, remains very cheap and is expected to remain popular.
What translations are necessary?
It will remain necessary to file claims in English, French and German before grant of a European patent. Then, if unitary effect is to be requested, a full translation will have to be filed (see “How do I get a UP” above). Such translation should be filed “as soon as possible after the date of the submission of a request for unitary effect” (Article 6(1) Regulation (EU) No 1260/2012). The translation has no legal effect, but cannot be a machine translation. For validation in other EPO states that are not (or not yet) participating, the usual rules apply. See our Fact Card: EPC States At-a-Glance
Some states (like the UK and Ireland) will require no further translation and will remain popular validation states in the “traditional” way.
What are the advantages of a UP?
Reasons why a UP may be advantageous include:
- No need to validate separately in each state covered by the UP, therefore reduced post-grant costs compared to validating in many UP states (e.g. more than four)
- One central renewal fee to be paid to the EPO
- Central enforcement via the Unified Patent Court
- Access to inspection orders (and other powers) via the Unified Patent Court
What are the disadvantages of a UP?
Reasons why a UP may not be advantageous include:
- Cost effective only if you require a patent covering multiple (e.g., more than four) UP states
- Some significant states are not part of the UP, including the UK, Spain, Republic of Ireland, and Poland. An EP patent must be validated in the usual way to obtain protection in these states.
- Your UP can be revoked centrally by the Unified Patent Court and not just by filing opposition in the first 9 months, so it is a case of “all eggs in one basket”.
What are the costs for obtaining a UP?
An application from which a UP ultimately results will start life as an EPC application in the usual way. The costs to grant will be the same.
During the transitional period a translation of the specification will have to be prepared and filed with the EPO, incurring associated costs. This could be high if the specification is very long. Quality is unimportant, but it is not supposed to be a machine translation. (How this might be tested or enforced is very unclear.) It could, for example, be in Greek. Spanish (and indeed Polish) may be a popular choice because a good quality translation into Spanish can be re-used for validation in Spain (or the same for a Polish translation used in Poland). Drawing a clear cost comparison between the UP route and the traditional route very much depends on the length of the document and on what states are to be chosen for validation. Please ask your Maucher Jenkins Attorney for an estimate.
In parallel, you can validate your European patent in the UK (which, following Brexit, is not participating in the UP) and this is very inexpensive, because there the are no translation costs.
What are the costs for renewing a UP?
Subsequently, an annual renewal fee will be due to the EPO. This renewal fee is set to be similar to the sum of annual renewal fees paid to maintain four EP validations (e.g., a European Patent validated in FR, DE, NL, and AT). The annual renewal fees to maintain a UP may be found at: https://www.epo.org/law-practice/unitary/unitary-patent/cost.html.
The following chart shows that the incremental additional fee for renewal in the UK is small. We anticipate UP + UK will be a very popular combination:
What is the Unified Patent Court (UPC)?
The Unified Patent Court (UPC) is a new court in which traditional European patents (EP) and the new unitary patents (UP) may be litigated.
By default, once the Unified Patent Court Agreement becomes effective, Unitary Patents and European patents will be under the jurisdiction of the Unified Patent Court and the relevant national courts. This includes any European Patents already in force (and validated in a Unified Patent Court contracting state) on the date which the Unified Patent Court Agreement becomes effective.
What patents fall under the jurisdiction of the Unified Patent Court?
Unitary Patents can only be litigated in the Unified Patent Court.
When the new system begins, European patents (EPs) will also automatically fall under the jurisdiction of the Unified Patent Court, but can be “opted out” (See below section on Opting Out) in which case they will be under the jurisdiction of national courts only (as before). Those EPs that are not opted out can be litigated either in the UPC or in relevant national courts.
European patents can continue to be validated in the UK and other states that are not part of the system (e.g. Spain, Switzerland, Poland) and continue to be enforced in the national courts of those states.
When will the Unified Patent Court begin?
The next milestone will be reached when Germany ratifies the Unified Patent Court agreement. This is expected to happen in June 2022, in which case the system will officially start on 1 October 2022; however, delays are possible.
Where is the Unified Patent Court?
The Unified Patent Court is split into a number of divisions.
There will be Local Divisions in Unified Patent Court contracting states (e.g., Local Divisions in Austria, Belgium, Denmark, France, German, Italy, and Netherlands) and Regional Divisions (e.g., the Nordic-Baltic regional division comprising Sweden, Estonia, Latvia, and Lithuania).
A Central Division will have seats in Paris, Munich and one further location (to be confirmed). The Paris seat will hear cases from sections B, D, E, G and H of the International Patent Classification (which include physics and electronics). The Munich seat will hear cases on patents in IPC section F (mechanical engineering, lighting, heating). Cases relating to patents in IPC sections A and C (human necessities, chemistry and metallurgy) will be allocated for the time being to one of these sections.
The Central, Regional, and Local divisions will form the Court of First Instance, and a Court of Appeal (based in Luxembourg) will hear appeals therefrom. There will be no further appeal from the Court of Appeal.
Litigation in the Unified Patent Court will be presided by a panel of three judges: two legal judges and one technical judge. Appeals will be presided by a panel of five judges.
What are the language(s) of proceedings of the Unified Patent Court?
The Central Division and Court of Appeal will hear cases in the language in which the patent was granted (i.e. one of English, German or French) or, in the Court of Appeal, the language of the first instance proceedings.
Proceedings before the Regional and Local divisions may be in a local official language. For example, the Local Division in Denmark plans to use Danish and English. The patentee may have to provide a translation of the patent into a local official language for proceedings before a Regional/Local division.
Do I get to choose the court?
The division of the Unified Patent Court in which an action should be brought is dependent upon the location of the defendant or alleged infringer. Actions should be brought in the state in which they are based, assuming that said state has a Local or Regional division. If it does not, then the action is brought at the court of the Central Division which covers the relevant technical area.
Actions for revocation or declaration of non-infringement will be heard by the Central Division.
Can I enforce my Unitary Patent at a national court instead of Unified Patent Court?
No, the Unified Patent Court has exclusive jurisdiction over Unitary Patents.
What is “opting out” of an European patent or European patent application?
Once the Unified Patent Court Agreement becomes effective, “traditional” European patents will be under the parallel jurisdictions of the Unified Patent Court and the relevant national courts. This includes any European Patents already in force (and validated in a Unified Patent Court contracting state) on the date which the Unified Patent Court Agreement becomes effective.
It is possible to file an “opt-out” request to prevent this from happening. Upon grant of the request, the specified European patents and European patent applications (after they are granted) will be under the jurisdiction of the relevant national courts only, in line with the present system for litigation in Europe.
Opting out is not possible for Unitary Patents, which by definition are under the sole jurisdiction of the Unified Patent Court.
What are some of the advantages of the Unified Patent Court?
- A patent can be centrally enforced over multiple jurisdictions across the EU*
- Injunctions, inspection orders, and other remedies are available over said multiple jurisdictions.
- A patentee can bring an action against an infringer in his country of residence or in any state where he is selling or even any state where sale is threatened. This ability to choose your battleground is also known as “Forum shopping”.
*Up to 24 of the 27 EU states; 17 at the commencement of the Unified Patent Court.
What are some of the disadvantages of the Unified Patent Court?
- A Patent subject to the jurisdiction of the Unified Patent Court is vulnerable to central revocation at any time during the life of the patent.
- The Unified Patent Court is as yet untried and uncertain. Processes in the court are unknown. It is also unknown if the court will be patentee friendly (or perceived to be) or otherwise. There is only one level of appeal. Patentees may prefer not to place their most valuable (or most vulnerable) patents in the hands of a court with no track record.
Should I opt out a European patent, or do nothing?
By opting out, one avoids the risk of central revocation of a European patent before the Unified Patent Court. One can rarely be certain that a patent is new and inventive and free from challenge. Maintaining a European patent under the current European litigation system means that a third party would be required to initiate invalidity actions at each of the relevant national courts. Litigation costs at the Unified Patent Court are likely to be higher than in a single national court, but come with the reward of a judgment enforceable in all contracting states. Additionally, the functioning of the Unified Patent Court is currently uncertain and procedure will take time to be established.
By not opting out and thus allowing possible joint jurisdiction of the Unified Patent Court and relevant national courts, it leaves forum-shopping options open to the patent owner whether to centrally enforce an European patent at the Unified Patent Court (across all Unified Patent Court contracting member states in which the European patent is validated), or before preferred national court(s).
Is the opt-out permanent?
Upon acceptance of an opt-out request, it will be effective for the lifetime of the European patent (even after the end of the transitional period).
It will be possible to withdraw a request for opting out a patent, and thus “opt back into” the Unified Patent Court, as long as no actions have been brought in a national court in relation to the relevant European patent. However, once the opt-out is withdrawn, it will not be possible to opt out again.
When can an opt-out request be filed?
An opt-out request can be filed from the start of the Unified Patent Court “sunrise period”. This sunrise period is expected to span three months before the Unified Patent Court begins. (If Germany ratifies the Unified Patent Court Agreement in June 2022, the sunrise period should start on 1 July 2022 before the Unified Patent Court enters into force on 1 October 2022.)
By opting out in the sunrise period, this ensures that a European patent or European patent application is already opted out by the time the Unified Patent Court begins hearing cases. If an action is brought in the Unified Patent Court against a case before it is opted out of Unified Patent Court jurisdiction, it will no longer be possible to do so afterwards.
The possibility of opting out will remain available until one month before the end of a “transitional period” of at least seven years, from entry into force of the Unified Patent Court Agreement.
How do I make an opt-out request?
Once the Unified Patent Court Agreement becomes effective, opt-out requests must be filed at the Unified Patent Court Registry using the Court’s online case management tool. During the “sunrise period” (a three-month period up to the date the Unified Patent Court Agreement becomes effective) opt-out requests may be filed with the EPO.
Who can file an opt-out request?
The owner of a European patent or the applicant for a published application for a European patent may file an opt-out directly or through a Court-recognized representative. The true owner or applicant may not always be the same as that recorded on the EPO register or on national patent registers. It is important that the opt-out request is filed in the correct name, otherwise it may be deemed invalid.
Your Maucher Jenkins patent attorney can assist you with filing opt-out requests.
