Some criteria for choosing between unitary patent and national validations of the european patent

From 1 January 2023, the period for early uptake of the Unitary Patent begins and related official forms are available on the EPO website. The Unitary Patent system is expected to enter into force on 1 June 2023, when the Unified Patent Court (UPC) should also come into operation, heralding a new era for patent protection in Europe.

You will find below some points to consider in order to know whether, following the grant of a European patent, it will be more appropriate for you to opt for the Unitary Patent by filing a request within one month of the grant, or for national validations of your European patent.

Desired protection areas and associated costs

The Unitary Patent enables to get a patent protection in many European states. Presently 17 states have ratified the agreement and will participate with the Unitary Patent, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden (see https://www.epo.org/law-practice/unitary/unitary-patent.html).

Among these 17 states, the more states you wish to have protection in, the more interesting it will be to opt for the Unitary Patent in terms of costs. Generally speaking, the Unitary Patent will limit validation costs, especially in case corresponding national validations would require translations and/or fee payments. The annual fees of the Unitary Patent will roughly correspond to the equivalent of the annual fees in four to five states.

To continue to have protection in some EPC states outside of these 17 states, for example in the United Kingdom, it will still be necessary to perform national validations.

To compare the costs with the Unitary Patent on one hand and with national validations on the other hand, our software solution EasyPatent now offers a module dedicated to European validations. Dedicated to foreign patent extensions, phase commitments and validations, EasyPatent gives you access to an immediate estimate of the cost of the operation on a case-to-case basis directly via IP Data².

Desired jurisdiction

The Unified Patent Court (UPC) will have exclusive jurisdiction for litigation relating to European patents with unitary effect and also to European patents that have not been opted-out. Therefore, the UPC will apply without any formality (Stay In) to Unitary Patents and national validations of European patents.

If you want your European patent to be subject only to the jurisdiction of National Courts, it will not be possible to choose the Unitary Patent (subject only to the jurisdiction of the UPC) and thus it will be necessary to opt only for national validations, while filing an Opt-out declaration.

Simplified management vs. territorial protection flexibility

The Unitary Patent will cover 17 states and will therefore allow a simplified management with a single patent to cover many states, in particular with the payment of a single annual maintenance fee.

On the other hand, with the unitary patent, it will not be possible to modulate the number of protected countries over time and it will be necessary to maintain the Unitary Patent as long as you wish to have protection in at least one country covered by the Unitary Patent. Also, if you wish to be able to give up protection in certain countries over time while maintaining it in other countries, it will be preferable to opt for national validations.

Our solution easypatent permits carrying out cost simulations with varying terms of protection from one country to another when you opt for national validations, and/or with the term of protection forecasted for the Unitary Patent.

The professionals at LAVOIX remain at your disposal to help you make your choice of validation according to your needs.

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