PROS & CONS Unitary Patent (UP) & Unified Patent Court (UPC)

The UP will provide a single patent right with a unitary effect across European Union member states which must be both:

  1. participating member states of the unified patent court (UPC), and 
  2. have ratified the UPC Agreement at the date of registration of unitary effect by the EPO.

Once Germany ratifies, the countries in which a UP will have effect are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Slovenia.

There are a number of benefits and but also notable drawbacks of UP to consider when deciding whether to request unitary effect – as discussed below:

Benefits of UPs:

  • Central administration: Under the existing “EPO bundle patent” system, validation costs can be incurred – typically involving Official fees, local agent costs, translations for countries not party to the London agreement, and renewal fees for each validated country.
  • Broad coverage: once Germany ratifies the UPC Agreement, at present, a UP will provide protection across 17 EU member states. More countries expected to join.
  • Single renewal fee payable: a single renewal fee will be payable to the EPO to maintain a UP. Under the existing “bundle patent” system, renewal fees must be paid annually in each country where the validated patent is maintained.
  • Limited translation costs: the UP will only need to be translated once; into English if proceedings before the EPO were in French or German, or into “any other official language of the (European) Union” if proceedings were in English. This is in contrast to the “bundle patent” system where each country has a different translation requirement.
  • Central litigation forum: all UPs must be enforced and litigated in the Unified Patent Court (UPC).
  • Pan-EU remedies: the UPC will offer a range of pan-EU remedies (for example, damages, preliminary and final injunctions, freezing orders etc.).
  • Licensing: a single licence can be granted in respect of a UP for all countries.
  • More options for enforcement: cross border activities that would not constitute indirect infringement of a bundle of national patents, e.g. export from Germany for use in Slovenia, would be considered indirect infringement of a UP as all activities are occurring within the same jurisdiction.

Drawbacks of UPs:

  • Limits in geographical scope: UP does not cover all EPC countries and thus would not cover key jurisdictions, for example, non-EU EPC countries such as the UK and Turkey, non-participating EU countries such as Spain and Poland, and non-signatory EU countries e.g. Croatia. Also, UPs will not cover EU countries that have not ratified at the time the request for unitary effect is registered by the EPO (
  • Renewal fees: it is not possible to pick which jurisdictions you would like protection in. Instead, a single renewal fee is payable for protection in all 17 participating and ratified states. Therefore, it is not possible to drop particular jurisdictions over the lifetime of the UP – resulting in higher maintenance costs toward the end of UP’s lifetime.
  • Loss of licence flexibility: UP must be licensed as a single right. It is not possible to split up UPs between countries. Inevitably leading to a more complicated licensing strategy in view of the unintended compartmentalisation of the European patent landscape.
  • National prior rights: These are patent applications filed in a specific country before, and published after, your patent’s priority date, and are typically relevant to novelty, only for the corresponding validated country. However, for the UP, such an application from any one of the 17 countries is deemed relevant to novelty for the patent, significantly increasing both the odds of such an application existing. The EPO has recently started to offer an optional national prior rights search service when issuing its intention to grant communication under Rule 71(3) EPC.
  • Translation costs: if protection would usually be only sought in countries party to the London agreement, translation costs for UP (entire specification must be translated) are likely to be significantly higher (previously, only claims were translated if party to London agreement).
  • Higher renewal fee: depending on extent of validation. If protection is sought in two or three EPC countries taking part in the UPC, the renewal fee for a UP would be higher. However, the UP is expected to be cost effective if validated in at least four (4) EPC contracting states – party to UPC.
  • Central litigation/invalidity proceedings: the validity of UP patent can be attacked at the UPC centrally and unlike EPO opposition, this option remains for the lifetime of the patent. Thus, UP is at risk of revocation across all 17 countries – in a single invalidity proceeding. Also, UPs can only be enforced in the UPC, which may not be a more cost-effective enforcement forum as compared to national courts. Accurate cost comparisons and quality of the courts will be established as case law evolves.
  • Same patent claims in all jurisdictions: in order to request unitary effect, the European patent must have been granted with the same set of claims in respect of all the participating member states. Consequently, flexibility of claim scope of the patent in different jurisdictions is eliminated.

If you have any questions regarding deciding whether to request unitary effect, please contact us for a 30 minutes free discussion.