Not all Unitary Patents are created equal
Different Unitary Patents can have different geographical coverage. The Unitary Patent states are fixed when a Unitary Patent is registered during the grant stage of a European patent. Countries that subsequently become Unitary Patent states are not retrospectively added. This is in stark contrast to European Trade Marks and Designs where changes to EU membership do retrospectively change geographical coverage.
On 1 September 2024, Romania becomes a Unitary Patent state and after Romania joins, there will be two types of Unitary Patent, those registered before 1 September 2024 and covering 17 countries (first generation Unitary Patents), and those registered from 1 September 2024 and covering 18 countries (second generation Unitary Patents).
Unitary Patents
Since 1 June 2023, it has been possible to register newly granted European patents as Unitary Patents instead of separately validating the European patent in each of the Unitary Patent member states. This has represented a saving in cost and procedure where protection in a significant number of states is desired, and take-up of the Unitary Patent has been higher than anticipated.
Since its launch, the Unitary Patent system has had 17 member states, meaning that all Unitary Patents registered so far have automatically covered these 17 countries. However, it has now been announced that Romania will become a Unitary Patent state as of 1 September 2024. So what will that mean for the geographic coverage of Unitary Patents?
Due to the way in which the Unitary Patent agreement was implemented (as an international agreement that member states can voluntarily join), it can and does have different membership to the EU.As a result, the geographical coverage of existing Unitary Patents will not expand as new countries join the system. Accordingly, Unitary Patents registered before 1 September 2024 will continue to cover the 17 original countries.
However, new Unitary Patents registered from 1 September 2024 will cover Romania in addition to the original 17 countries.
Not all Unitary Patents are created equal
As further countries join the system, there is the potential to be third, fourth etc. generations of Unitary Patents, each generation having greater geographical scope than the previous ones.
How does this affect the Unified Patent Court?
Despite the increased geographical coverage only being available for Unitary Patents registered from the effective date of ratification of a new country, the Unified Patent Court will acquire jurisdiction in that new country for all European patents that have not been opted out.
So, for example, if you have a first generation Unitary Patent and a separate national validation in Romania, they will remain as separate patents from 1 September 2024, but the Unified Patent Court will have jurisdiction over both.
Delay to cover Romania now possible
In view of the imminent ratification of Romania, the European Patent Office (EPO) have announced that they are accepting requests for a delay of registration of Unitary Patents so that Romania is covered. The request for registration would still need to be filed within the normal time frame of one month from grant, but the EPO will delay, if asked to do so, the actual registration to allow Romania to be covered.About the author
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