The European Patent with Unitary Effect (Part I)

Today we start publishing a series of articles in the form of short FAQ about the European Patent with Unitary Effect (EPUE).

1. What is the European Patent with Unitary Effect (EPUE)?
2. Which are the participating countries?
3. When is the expected entry into force?
4. How to get an EPUE?

1. WHAT IS THE EUROPEAN PATENT WITH UNITARY EFFECT (EPUE)?

The EPUE is a European patent that will be granted by the European Patent Office (EPO) just like the “classical” European patents but with a “unitary” effect in a certain number of countries of the European Union. This unitary effect will have, at least, two immediate consequences: first of all, there will no longer exist the need to fulfil the national validation requirements (namely submitting translations in the countries that still require them, totally or partially); secondly, the European patent will not give rise to a bundle of national patents which are ruled by national patent law, just like it occurs now, but rather it will obey to a “uniform” regime and have a unitary effect in all the participating EU countries. One of the most relevant aspects of the unitary effect is the patent will be subject to a centralized litigation system in the new Unified Patent Court.

2. WHICH ARE THE PARTICIPATING COUNTRIES?

The countries that will be covered by the unitary effect are the ones that ratified the Unified Patent Court Agreement (UPC Agreement). Until now, there are 17 participating EU Member-States (besides Portugal, France, Belgium, Netherlands, Germany, Austria, Italy, Denmark, Sweden, Finland, Estonia, Latvia, Lithuania, Bulgaria, Malta, Luxemburg, and Slovenia). As for Spain, Poland and Croatia, these countries have not ratified the UPC Agreement, thus, cannot be covered by the unitary effect.

3. WHEN IS THE EXPECTED ENTRY INTO FORCE?

At this moment, it is expected that, upon Germany finalizing the ratification formalities, the EPUE system entries into force in the late 2022 or in early 2023.

4. HOW TO GET AN EPUE?

Until the patent is granted by the EPO, nothing changes in terms of prosecuting formalities. The applicant must submit a request for “Unitary Effect” in the EPO, within one month after the date of publication of the granting decision in the European Patent Bulletin. It will also be necessary to provide a translation of the granted text of the European Patent:

• In English, when the language of the proceedings is French or German; or
• In any other official language of a Member State of the European Union when the language of proceedings is English.

After a transitional period (6 years with the possibility of being extended for further 6 years), no translation will be required when opting for the unitary effect. The translation is for information purposes only and has no binding legal effect.

There will also be a compensation scheme covering the translation costs of the application in the pre-granting phase for SMEs, individuals, non-profit organisations, universities, and public research organisations. To be eligible, these entities:

• Must have their residence or main business location in an EU member state; and
• Must have filed the European patent application or Euro-PCT application leading to the Unitary Patent in an official EU language other than English, French or German.

Elsa Guilherme / Leonor Silveira / António Corte-Real

For more information or any questions: sgcr@sgcr.pt.