The Unitary Patent (UP) system is a patent title that, through a single legal action, grants protection with the same effects in each and every participating Member State.
Since Romania joined this system on September 1, there are now 18 participating Member States.
One might ask: What are the advantages and disadvantages of the unitary system compared to the traditional country-by-country validation system?
Advantages of the Unitary Patent System
The Unitary Patent System consists of two pillars: the Unitary Patent and the Unified Patent Court (UPC). This system may offer several advantages:
- Reduced registration costs: The patent remains in force in all countries participating in the system through the payment of a single annual maintenance fee to the EPO (European Patent Office), which covers all countries participating in the system.
- It is a simplified and harmonized procedure.
- It provides uniform protection across all participating EU Member States.
- The EPO serves as a one-stop shop for patent holders to pay renewal fees and record subsequent transactions (such as the granting of licenses).
- It harmonizes infringement proceedings across the various countries in the system through a single infringement action filed with the UPC. The UPC has jurisdiction over both unitary patents and traditional European patents for which no opt-out has been requested.
- Compensation of €500 for translation costs is provided for a 6-year transition period—extendable to a maximum of 12 years—for those European patents for which unitary effect is requested and that were originally filed by small or medium-sized enterprises, NGOs, etc., in a language other than English, French, or German.
Disadvantages of the Unitary Patent Compared to the Traditional System of Validations
- The Unitary Patent is subject to centralized invalidation proceedings before the UPC, which, if successful, automatically invalidate it in each and every country participating in the system.
- It is not possible to waive protection by failing to pay the corresponding annual fees in countries that are no longer of interest, as is currently possible in the case of patents subject to the national validation system.
- If the maintenance fee for a unitary patent is not paid, the patent is deemed abandoned in all countries participating in the system.
- If protection is sought in fewer than four countries within the system, the unitary patent generally entails higher maintenance costs than the system of national validations.
Therefore, it would be advisable to evaluate, on a case-by-case basis for each patent, the strategy that best aligns with regional development interests and the characteristics of the patent holder’s business. Based on that assessment, one should then choose either the Unitary Patent or the traditional system of validation and maintenance.
Irene Gascón, Associate European Patent Attorney in the Patent Department at ELZABURU