El Unitary Patent System (PU) It is a patent title that, with a single legal action, grants protection with the same effects in each and every one of the participating Member States.
Since Romania joined this system on 1 September, there are now 18 participating Member States.
It is worth asking: what advantages and disadvantages does the Unitary System have compared to the traditional system of country-by-country validations?
Advantages of the Unitary Patent System
The Unitary Patent System is composed of two pillars: The Unitary Patent and the Unified Patent Court (UPC). This system can have several advantages:
- Reduction of registration costs: The patent remains in force in all countries adhering to the system by paying a single annual maintenance fee to the EPO (European Patent Office), which covers all countries adhering to the System.
- It is a simplified and harmonized procedure.
- It provides uniform protection in all participating EU Member States.
- The EPO acts as a one-stop shop for patent holders to pay renewal fees and record subsequent transactions (such as licensing).
- It unifies infringement proceedings in the different countries of the system through a single infringement suit filed with the UPC. The UPC has jurisdiction over both unitary patents and conventional European patents for which an opt-out has not been requested.
- A translation fee compensation of €500 is provided for a transition period of 6 years, extendable to a maximum of 12, for those European patents for which unitary effect is requested and which were originally filed by small or medium-sized companies, NGOs, etc. in a language other than English, French or German.
Disadvantages of the Unitary Patent compared to the traditional validation system
- The Unitary Patent is subject to centralized invalidation actions before the TUP which, if successful, automatically invalidates it in each and every one of the countries adhering to the system.
- It is not possible to abandon protection by failing to pay the corresponding annual fees in countries that are no longer of interest, as can be done right now in the case of patents subject to the national validation system.
- In the event of non-payment of the maintenance fee for the unitary patent, it is abandoned in all countries adhering to the system.
- If protection is desired in fewer than 4 countries in the system, the unitary patent generally has a higher maintenance cost compared to the national validation system.
Therefore, it would be advisable to study each patent case by case to find the strategy that best responds to the interests of territorial development and the characteristics of the owner's business. In view of this, opt for the Unitary Patent or adopt the traditional validation and maintenance system.
Irene Gascon, European Associate Agent of the Patent Area by ELZABURU
