Examination procedure
The process of Examination for a Unitary Patent (UP) application is the same as that for a standard European “bundle” patent application. The Examination is performed by the European Patent Office (EPO).
Once filed, the application is submitted for a Formal Examination, which identifies any procedural and formalities issues which may be present in the application. This is followed by a Search Report and Search Opinion, which cite prior art documents relevant to the patentability of the application and discuss their relevance. Under a normal timeline, the Formal Examination and Search Report are issued within 18 months of filing.
Any response provided by the applicant is taken into consideration for the next stage of prosecution, which involves a more in-depth response by the Examination Division regarding the patentability of the application, known as a Substantive Examination. This stage of the application process usually takes place 24-36 months after the application is filed.
If the applicant successfully convinces the EPO that the claims indeed relate to a novel and inventive concept, the prosecution proceeds to the grant stage. The Examining Division informs the applicant of the text in which it intends to grant a European patent, which the applicant can then approve. Once so approved, the grant takes effect on the date it is mentioned in the European Patent Bulletin.
Within 1 month of the grant date, the applicant can request unitary effect, which results in the formation of a Unitary Patent. Otherwise, the patent remains a (traditional) European patent, and can be validated within 3 months from grant in the chosen EPC member states, thereby forming a collection of individual national patents. Even if the applicant requests unitary effect, they may also want to validate the European patent in one or more other countries which are EPC member states but not UPC member states.
Costs
The cost of preparing and filing a Unitary Patent compared to a more standard “bundle” European patent application are the same. The prosecution process up to and including grant is identical. The differences come in the validation stage and in post-grant renewal fees.
Once the EPO have announced their decision to grant the approved text and if the applicant requests unitary effect, the applicant no longer needs to pay for validation separately in each UPC member state. Depending upon the requirements of the particular member state, validation may involve the filing of a translation and these, along with the associated attorney fees in each member state, can become expensive if you are validating widely. Instead, for the Unitary Patent, only a single translation needs to be filed with the request for unitary effect. If the text is in English, then a translation into one of the other EU languages is required. If the text is not in English, then a translation into English is required.
Even if the applicant requests unitary effect, they may also want to validate the European patent in one or more other countries which are EPC member states but not UPC member states and for these member states, the process remains unchanged.
For a classic European patent, renewal fees are also required to be paid in each individual member state in which the patent has been validated. Effectively, the patent fragments into a series of individual national patents, and renewals are paid according to the laws in each member state.
By contrast, a Unitary Patent requires only a single, centralised renewal payment to be submitted annually. This renewal cost are generally less expensive than a European patent validated and maintained in four of the UPC member states which are signatories to the Unitary Patent system. Therefore, if an applicant intends to validate its patent in more than four UPC member states, it will be more cost-effective in terms of renewal fee payments, to file an EP and request its unitary effect after it has been granted instead.
Double Patenting
The UPC does not address double patenting but instead leaves this to the law of the individual member states.
Most EPC member states do not permit simultaneous protection by both a national patent and a validated European patent for the same invention, although there are a number of exceptions, and the definition of “same invention” may differ between member states.
Existing provisions in member states will, in most cases, also apply to simultaneous protection by both a national patent and a Unitary Patent.
Whilst Germany does not permit simultaneous protection currently, the act that adapts German patent law to the UPCA amended the law so that simultaneous protection by a German national patent and a Unitary Patent is available. Similarly, simultaneous protection is available by a German national patent and a validated European patent that has not been opted out.
Currently France does not permit double patenting, however simultaneous protection is permissible by a Unitary Patent and by a national patent, or European patent for which no opt-out has been declared and by a national patent. The simultaneous protection is subject to caveats regarding use of the patent, for example common parts of the patents cannot be separately licenced. There are also restrictions on proceedings at a French court for the French Patent where the UPC is also hearing a claim based on the Unitary Patent.
Estonia does not prohibit a simultaneous protection between a European patent with unitary effect and a national patent.
