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The Unified Patent Court and the Unitary Patent

Navigating the new EU patent system

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Guidance on the Unitary Patent from Herbert Smith Freehills and the EPO

15 September 2017

Want to know how to obtain the new unitary patent right that will become available across 26 of the 28 EU member states (including the UK) once the Unified Patent Court is established? Wondering how the new right will impact on your patent portfolios and licensing schemes? 

Herbert Smith Freehills' Laura Deacon (Of Counsel) and Joel Smith (Head of IP, UK) have had a practice note on the unitary patent published by Practical Law which looks at these issues, including patent portfolio management and transactions involving the new right.

A quick reminder on the basics of obtaining a UP:

  • In order to be eligible for registration as a unitary right, a European patent must have been granted with the same set of claims in respect of all 26 participating Member States. The new EPO guide states that "It is therefore important not to withdraw the designation of any of the 26 participating Member States because this would rule out obtaining a Unitary Patent. Moreover, a European patent should not contain a different set of claims for any of the participating Member States, as this too would also prevent the EPO from registering a Unitary Patent."
  • To obtain a UP: a formal "request for unitary effect" must be filed with the EPO in writing by the European patent proprietor. This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin.

The EPO published guidance on obtaining, maintaining and managing unitary patents on 7 September here.

The guidance details:

  • How to obtain a unitary patent (UP)
  • The compensation scheme for translation costs
  • Renewal fees
  • Publications and file inspection
  • How to register transfers, licences and other rights and file statements on licences of right
  • Procedural questions, language regime , representation and fee payment
  • Legal remedies against EPO decisions: the role of the UPC

For more on the unitary patent see here.

The Unified Patent Court (UPC) and the Unitary Patent (UP)

Plans for a 1 December 2017 start date for the UPC (and UP) have now been withdrawn by the UPC Preparatory Committee with no further date set as yet. A mid 2018 start date would appear to be a reasonable estimate depending on further ratifications.

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