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Since June 1, 2023, the Unitary effect can be requested. In practice, once a European Patent is granted, requesting a Unitary effect is a single step that leads to the validation of this patent in 18 EU participating member states at once.
The current participating member states of the Unitary patent (UP) system, to which the unitary effect extends, are the following : Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, Sweden.
April 2025 – New Unitary Patent Guidelines
As from the 1st of April 2025, guidelines primary addressed to the staff of the European Patent Office (EPO) have been published. However, it becomes handy for parties to the proceedings and patent practitioners to have access to these guidelines to precisely foresee how the EPO applies the legal bases related to the Unitary patent.
Indeed, it may seem a real challenge to extract from articles and rules, each step of the procedure needed to obtain a Unitary patent, particularly when exceptional situations arise. UP guidelines will help bridging the gap between theory and practice. Although UP guidelines are not legally binding, they provide clear guidance to the user of the Unitary patent system. In the coming years, we can expect to see an integration of newly formed case-law into the UP guidelines for exceptional cases.
Why does it matter?
Strategy
Understanding the Unitary Patent system is key for your strategic IP management. Indeed, in one step, the Unitary effect offers the possibility to validate your patent in 18 EU countries. This is ideal when seeking broad protection on European territory. However, all limitations linked to the Unitary effect must be carefully considered as well.
Cost efficient
When willing to protect your invention in a high number of European countries, the costs may be holding you back from protecting your invention on a large territory. A unitary effect may be advisable in such cases.
Clarified procedural steps to obtain Unitary effect
Below, we are drawing attention to procedural details and providing an overview of the procedure to obtain Unitary effect after the grant of a European patent.
Eligibility
Eligible European patents require :
the same set of claims for all participating member states,
having designated all participating member states of the UP system.
This route is not available to patentees who are subject to the restrictive EU measures against Russia.
When to request Unitary effect?
From the receipt of the intention to grant a European patent until a month after the publication of the mention of the grant of the European patent, it is possible to request a Unitary effect of a granted European patent (as depicted in the timeline below). When missing this deadline, it may still be possible to request a re-establishment of rights within two months after the deadline to request Unitary effect. Otherwise, the patent will need to be validated country-by-country through the national route.
Who is entitled to request a Unitary effect?
The request must be made by all co-proprietors in respect of participating member states to which Unitary effect will extend. The requester(s) must be identical to the proprietor(s) mentioned in the European Patent Register at the date of filing of the request for Unitary effect or, at the latest, at the date of registration of Unitary effect.
In which language should you request a Unitary effect?
The Unitary effect should be requested in the language of the proceedings of the granted European patent.
Which translation should be filed to request a Unitary effect?
The request for Unitary effect must be accompanied by a complete translation of the specification of the granted European patent, depending on the language of the proceedings during the European procedure as stated in the table below.
When does my Unitary Patent start to take effect?
If all requirements to obtain a Unitary Patent are fulfilled, the EPO registers a Unitary effect and communicates the date of registration to the requester.
When registered, the Unitary effect starts on the date of publication of mention of the grant of the European Patent.
Transfer of the unitary patent
When you want to transfer the rights of a Unitary patent, these rights have to be transferred for all participating member states to which the unitary effect extends.
Licenses
A Unitary patent may be licensed in respect of the whole or part of the territories of the participating member states to which the unitary effect extends.
Reduced annual fees with registration of statement on licenses of right
Once a Unitary patent takes effect, renewal fees will be paid every year to the EPO. One way to reduce the amount of renewal fees by 15%, is to register a statement that you are willing to allow any person to use your invention as a licensee in return for appropriate consideration. Consequently, renewal fees due after receipt of the statement on licenses of rights will be reduced by 15%. However, the patentee will be able to withdraw such a statement only if he pays back the full amount by which the renewal fees were reduced.
Expert services
Requesting Unitary effect after the grant of a European Patent is a strategic step that should be discussed with your patent attorney. When questions arise about the Unitary effect and all matters relative to the Unitary patent, do not hesitate to contact us for more information. We will gladly help you navigate the Unitary patent system and answer your questions.