UP vs Traditional EP

The Unitary Patent (UP) supplements existing European Patents (EPs). A UP is a single patent covering all participating Member States of the European Union (EU), with minimal translation costs and a single renewal fee. Compared to the traditional system of validating an EP in all Member States, this can provide substantial cost savings particularly where patent protection covering most of Europe is sought.

Procedures for the filing and prosecution of European patents remain the same. Upon grant, patentees have the choice whether to validate their European patent in selected Member States and obtain a bundle of national rights (the traditional system), or elect for a UP, effective in all participating Member States.

The UP provides a pan-European right effective in the participating EU Member States (17 as of April 2024 and 18 as of 1 September 2024). Future UPs can have broader coverage as additional Member States join the UP system.

In Member States that are not part of the UP, patentees can traditionally validate the EP in those countries alongside the UP, so full Member state coverage can be obtained.

The UP system is designed to reduce complexity and costs. The benefits include:

• Translations: Unlike the current EP procedure where translations are required for national validation of European patents in EU member states, translation of the patent specification into only one other language of the European Union is required. Eventually, no translation will be required.
• Official fees: There is no official fee for requesting unitary effect.
• Renewals: A single renewal fee is payable to the European Patent Office. Renewal fees correspond to the combined renewal fees due in the United Kingdom, Germany, France and Netherlands. A UP should cost less than an EP validated and maintained in four of the 24 EU member states.
• Enforcement: UPs are automatically under the jurisdiction of the UPC. Therefore, UPs must be litigated in the UPC and a single decision on infringement can be obtained, which applies in all participating Member States. This can represent a significant cost saving compared to having to litigate before each national court.

The main disadvantages are:

• Single renewal fee: The renewal fee will increase each year of patent life. The same applies to traditionally validated EPs, but it is possible to trim down the countries during the life of the patent to reduce the number of countries where renewal fees are payable. It is not possible to reduce the single fee for the UP by carving out Member States. If the fee is not paid, all protection is lost.
• Enforcement: Since UPs are automatically under the jurisdiction of the UPC, third parties can seek revocation of the UP in a single decision that applies in all participating Member States. Therefore, all your eggs are in one basket. The pros and cons of the UP and the new UPC system should be borne in mind when deciding whether or not to choose a UP. We can advise you further if you would like to discuss your specific case.

Currently, UP proprietors will still need to apply for an SPC on a country-by-country basis to obtain patent term extension in the form of Supplementary Protection Certificates (SPCs).

The European Commission is currently considering proposals for a Unitary SPC, as well as a centralised national SPC grant procedure aimed at harmonising the SPC grant procedure and streamlining the prosecution of SPC applications to reduce the associated costs.