[Patentpractice] Allowed EP patent -- opt between Unified Patent or country-by-country validation?

[Scott Nielson]

One clarification, I said there are 25 EU countries. There are actually 27 EU countries. However, only 25 of them have entered into an agreement to participate in the unitary patent system. Of those 25, only 17 have formally completed the requirements and currently participate in the unitary patent system.


Scott Nielson

801-660-4400

________________________________
From: Scott Nielson <scnielson at outlook.com>
Sent: Tuesday, February 13, 2024 2:50 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Allowed EP patent -- opt between Unified Patent or country-by-country validation?

This website provides a pretty good breakdown of the costs. Cost of a Unitary Patent | Epo.org<https://www.epo.org/en/applying/european/unitary/unitary-patent/cost>

The key things to keep in mind are: (1) a unitary patent only covers (a) EU countries that have (b) agreed to participate in the unitary patent system. GB is not an EU country so it is excluded under provision (a). There are 25 EU countries. Of those, 17 currently participate in the unitary patent system. If you get a unitary patent, it will only cover those 17 countries even if the others join later. See Unitary Patent | Epo.org<https://www.epo.org/en/applying/european/unitary/unitary-patent>

Based on the cost estimate guide above, I generally only recommend a unitary patent if the client is interested in coverage in at least four of the 17 countries currently participating in the unitary patent system.

In your case, if the client wants coverage in only DE, GB, and FR, then I would go the conventional validation route in those three countries. Also, my recollection is that DE and FR do not require full translations of the patent application for conventional validation (versus Spain, which does), but you should double check that with the EP associate.

There is another factor to consider which is court jurisdiction. Unitary patents are subject to the exclusive jurisdiction of the Unified Patent Court. Conventional EP patents are subject to the jurisdiction of the UPC by default, but the applicant can opt out so the patent is subject to the jurisdiction of national courts.

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, February 13, 2024 2:22 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: [Patentpractice] Allowed EP patent -- opt between Unified Patent or country-by-country validation?

I am now facing the choice for the first time of an allowed EP patent, and how to validate.  Opt in for a single European Unitary Patent, or validate in the big countries (DE GB FR probably).

Questions
     -- fee schedule is here https://www.epo.org/en/legal/guide-up/2022/uppg_a_v.html   When they say "10th year" is that 10th year from filing, or 10th year from EP allowance? The yardstick is "published in the European Patent Bulletin" -- does that happen at 18 months, or at allowance?
     -- when GB quit the EU club, they quit the Unitary Patent club too, right?  So if I opt for Unitary Patent, I still have to validate in GB, right?
     -- this application was prosecuted in English.  So to validate Unitary, we have to translate into one other language https://www.epo.org/en/legal/guide-up/2022/uppg_b_ii_4.html   For country-by-country validation, translate for all

Does anyone know of a cost calculator?

Thanks

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