When the new Unitary Patent and UPC system comes and force you will have a number of options for obtaining patent protection in Europe, including:

  1. Separate national patent filings at each local intellectual property office.

  2. A “classic” European Patent that is validated separately in the countries of your choice. This may include EU member states that are part of the new system.

  3. A Unitary Patent, obtained by requesting that the grant of the European Patent has unitary effect. This will extend to all member countries which are part of the system at the relevant time.

Your overall filing strategy can involve all three of these options. However, it is not possible to obtain two patents for a single invention, so for each country a specific invention can only be protected via one of these routes.

The choice of whether to obtain a Unitary Patent or not will strongly depend on the specific countries where you need protection.

First of all, you will need to consider the cost savings involved in avoiding translations and other formalities involved in the validation process. The savings could be significant, but as noted above no translations are required for France or Germany in the validation stage, and the UK is not part of the new system.  A lot of granted European Patents are validated only in Germany, France and the UK, and in that case the cost of obtaining and maintaining a Unitary Patent will be higher than obtaining and maintain these three national patents.

The other main consideration is that of renewal fees.  As a unitary right, the Unitary Patent will be kept in force in all relevant territories by payment of a single renewal fee. This is roughly four times what a regular national renewal would cost, so represents good value if you have commercial interests in more than four countries.

For classic European Patents, you would pay national renewal fees separately to the national offices, as is currently the case.  You also have the ability to “prune” your portfolio if your needs change, by dropping renewals for secondary countries if you need to save costs.

Classic European Patents can also at the moment be “opted out” of the jurisdiction of the Unified Patent Court.  In contrast, the new Unitary Patents will be under the exclusive jurisdiction of the Unified Patent Court, rather than the national courts.

So, in considering your filing strategy you need to pay careful attention to the list of countries mentioned above and work out which would be the most cost-effective way of proceeding, as well as considering the question of whether you want to opt out of the jurisdiction of the Unified Patent Court.

Information accurate as of 24/11/2022

 

 

At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!