Enhanced cooperation under Regulation 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of unitary patent protection is being used to establish the unitary patent (UP). Also termed the European patent with unitary effect, the UP will be a single patent right covering all the states that take part in the enhanced procedure. It is expected that the UP will cover 26 of the 28 Member States (excluding Croatia and Spain who have not taken part in the enhanced cooperation procedure so far). However, although Poland participated in the enhanced cooperation, since Poland has since indicated that it will not sign the UPC Agreement establishing the Unified Patent Court (UPC), UPs will not be enforceable there as only the UPC will have jurisdiction over them.
The application process for UPs will be the same as that for a standard EP: centrally via the EPO. In fact the application for both will be the same with the European patent granting and then the proprietor having the option to select unitary protection rather than a bundle of national rights. Once the UPCA is in force any new EP application or EP application that is already in the EPO system can be converted into a UP within a month of grant (the EPO cannot start granting UPs until the UPC system is in place).
EPs will still be available (although after the transitional period they must be litigated in the UPC system – i.e. 7 years, plus a further 7 years if the assessment to be conducted 5 years into the UPCA decides this is appropriate).
Even if a UP is used, if full European coverage is required then separate EPs will need to be obtained for non-EU EPC states: Norway, Turkey and Switzerland (as they are not EU MSs they cannot be part of the UPC/UP system) and also for any MSs which have not taken part in the enhanced cooperation procedure (currently Spain and Croatia) or which have not signed up to the UPCA (currently Spain, Poland and Croatia). National patents will still be available from national patent offices and will be litigated in national courts.
A consolidated version of the draft Rules relating to the Unitary Patent Protection (dealing with the administration of the UP by the EPO) is available here. The EPO issued guidance on the unitary patent here (dated August 2017 but published September 2017).
The EPO has adopted what it refers to as a business friendly fee pattern for the fees payable for unitary patents. The Select Committee of the Administrative Council of the EPO endorsed the "True Top 4 proposal" tabled by the European Patent Office on renewal fees applicable to the unitary patent. This proposal corresponds to the charges for renewal in the Top 4 most popular validation jurisdictions: Germany, France, Great Britain and the Netherlands (the alternative had been the "Top 5" approach which included Swedish designations). There is provision for a reconsideration of this Top 4 basis after 4 years. The EPO commentary states that "this decision clears the way for other final preparatory measures for the unitary patent".
On 15 December 2015 the EPO announced that it had formalised a series of agreements into a complete secondary legal framework comprising the implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states.
For more comparative detail on fees see the "Comparison of fees and external costs between a European Patent and a Unitary Patent", submitted by the President of the EPO to the Select Committee to assist in their deliberations, which compares the costs of registering EPs in 1,2,3,4,5,6 or 7 designations and all 25 designations that would be covered by the UP under current participation rates with the cost of the revised proposal. The comparison assumes that grant is in year 4. The figures show cumulative savings on this basis for 4 or more designations over 20 years although all the assumptions should be reviewed. The EPO guidance gives details of the renewal fees to be paid and describes the renewal fee level as "very attractive and business friendly" (see pages 10-11).
The contents of this publication, current at the date of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication.
© Herbert Smith Freehills 2020