1. What is a unitary patent?

Once granted, a European patent does not automatically take effect in the territory of all member states. Instead, individual states had to be selected in which the European patent was to take effect. In the other states, the European patent lapsed. With the introduction of the Unitary Patent, it is now possible to either – as before – select individual member states of the European patent system and/or apply for a Unitary Patent. By selecting a unitary patent, the European patent becomes uniformly effective in the territory of currently 17 EU member states. It is therefore also referred to as a European patent having unitary effect. The EU Member States currently participating in the Unitary Patent are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Further states are to follow in the next few years, so that at the end of the process 25 member states can be reached via a unitary designation.

2. Which countries do not participate in the unitary patent?

All EU states participate in the unitary patent with the exception of Poland and Spain. Countries outside the EU do not participate in principle. For countries that do not participate in the Unitary Patent, such as the UK, Spain, Switzerland, Poland or Norway, national validation is therefore still required.

3. What is validation of a European patent?

For a European patent to take effect in the territory of a Member State, certain actions must be carried out after grant, which are determined individually by each country. “Validation” refers to all actions to be carried out by the patent proprietor in order for the European patent to take effect in the territory of a Member State. Depending on the country, validation may require the filing of a translation of the patent into the national language, the payment of official fees or the appointment of a representative before the national patent office. Details of the requirements in the individual member states can be found in the European Patent Office’s publication National law relating to the EPC.

4. How to obtain a unitary patent

In order to obtain unitary effect as a Unitary Patent, the patent proprietor must meet the following requirements no later than one month after the date of publication of the grant of the European patent:

• file a request for unitary effect with the EPO; and
• file a translation of the European patent into English where the language of the European patent is German or French, and file a translation into another official language of the EU where the language of the European patent is English.

5. Unitary patent or national validation – which is more cost-effective?

If a European patent is to cover at least four states from the group of 17 Unitary Patent member states (UP states), a Unitary Patent is certainly the more favorable option. But even with a smaller number of UP states, of which only one state requires a translation of the entire text, such as Italy, selecting a unitary patent is more favorable. If, on the other hand, the European patent is only to be validated in a few UP states for which there is no translation requirement, e.g. in Germany, the Netherlands and France, individual designations under the old system are more cost-effective. If you are not sure whether you should choose a Unitary Patent or not, please send us a list of the countries you are interested in. We will then inform you of the costs and determine which option is more cost-effective.

If you have any questions, please feel free to contact us at any time.

Wolfgang Keilitz