The Unitary Patent

A key selling point of the Unitary Patent is its pan-EU effect (or, more accurately, across those Member States that sign up – see Participating EU Member States). The effect of this is that a Unitary Patent can be enforced across participating Member States through a single court action. This is particularly attractive for patentees who wish to avoid the risk of duplication and inconsistent decision making inherent in the European patent litigation system under the EPC. However, a Unitary Patent can also be invalidated across the same states in the EU through one central court action, which for many patentees is a major concern.

Another key benefit of the Unitary Patent is the potential for significant costs savings (both in terms of application and maintenance costs, but also in enforcement). However, in practice, whether the Unitary Patent is cheaper than a classic European Patent designated in relevant states depends upon the number of Member States where protection is typically sought. Whilst there are clearly savings for patentees who typically validate their classic European Patents in a large number of countries, the position is different, once renewal fees have been taken into account, for those that typically validate in a small number of key territories.

Options for patentees

Patentees have the following options in relation to their portfolio in the EU and in EPC states:

A Unitary Patent (covering all participating EU Member States)
A classic European Patent validated in individual EPC states
A Unitary Patent, together with a classic European Patent with separate validations in non-ratifying Member States and non-EU EPC states
National patents in individual states (subject to national rules on double patenting)

When deciding on a patent strategy, relevant factors include the pan-EU effect of the Unitary Patent (and related cost savings), as well as confidence in the UPC decisions.

Whilst it is possible to obtain an SPC based on a Unitary Patent, there is not, at least for the time being, a ‘unitary SPC’, though this is under consideration. National applications for SPC protection can be based on the Unitary Patent, in the same way as for classic European Patents. However, SPCs based on a Unitary Patent are, like the Unitary Patent upon which they are based, subject to the exclusive jurisdiction of the UPC - i.e., they cannot be opted out of the UPC regime.

Applicable law relating to a Unitary Patent

One aspect to consider carefully when applying for a Unitary Patent is the applicable law applied to it as an object of property, particularly where there are co-applicants. The rules relating to applicable law depend upon the nationality of the applicant/s, and not the current owner of the Unitary Patent.

Where there is a single applicant, this will be determined as follows:

The participating Member State where the applicant had their residence or principal place of business on the date of filing; or
Where (a) does not apply, the participating Member State where the applicant had a place of business on the date of filing; or
Where neither (a) nor (b) apply, German law will apply.

Where there are two or more joint applicants, the above tests are applied in the order of the applicants being named on the application. The order of naming for joint applicants on an application for a Unitary Patent is therefore a key consideration.