Hogan Lovells

Unitary Patent Guide Published by the EPO

22 August 2017

The Guide begins with an overview of the concept of the Unitary Patent. It explains that this is an alternative to the existing options of national patents granted by national patent offices and national validations of European patents. The guide also notes that the Unitary Patent system builds on the EPC. This means that the pre-grant phase is exactly the same as for European patents, in that the EPO has been entrusted to deal with the administration of requests for a Unitary Patent ('requests for unitary effect''). Once a European patent has been granted, a separate, simple post-grant procedure can be initiated at the EPO with a view to obtaining a Unitary Patent.

The remainder of the Guide is directed to the specifics of the procedure for obtaining a Unitary Patent, renewing a Unitary Patent, the information that will be available about Unitary Patents that have been granted, who can act before the EPO with regard to a Unitary Patent, how to record changes of ownership and licences, and finally, other procedural questions (e.g. the language regime) and the legal remedies against EPO decisions.

One point of particular interest that is clarified in the Guide is in relation to territorial scope. A Unitary Patent covers the territories of those participating Member States in which the UPCA has taken effect at the date of registration of unitary effect by the EPO. This means that, although 26 EU Member States are currently participating in the Unitary Patent scheme, Unitary Patents registered at the outset will not cover all 26 of their territories, because some of them have not yet ratified the UPCA. It is likely that the outstanding ratifications of the UPCA happen successively. Consequently, there will be different generations of Unitary Patents with different territorial coverage (coverage will not be extended to other Member States which ratify the UPCA after a UP has been granted).

Furthermore, the Guide notes the following in relation to the United Kingdom:

"Whether the United Kingdom continues to participate in the Unitary Patent and the Unified Patent Court after its withdrawal from the EU will be a political decision for the EU, its remaining Member States and the United Kingdom and may be addressed as part of the exit negotiations. Should the United Kingdom’s withdrawal from the EU become legally effective, EU Regulations No 1257/2012 and No 1260/2012 creating the Unitary Patent will cease to apply there. This will not, however, lead to a loss of patent protection in the United Kingdom for Unitary Patent proprietors. Appropriate solutions that avoid any loss of rights or legal uncertainty can be expected. The protection of acquired rights and the preservation of legal certainty are general principles of law respected throughout Europe." (emphasis added)

A PDF of the Unitary Patent Guide in full is available here.

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