A guide to the UPC and the UP - Flipbook - Page 31
Lapse of a Unitary Patent
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Due to the unitary effect, a Unitary patent lapses with respect to all Participating Member
States. 61 Thus, it is not possible to have a valid Unitary patent in some Member States in
which it was granted, but not in others. Since it is a unitary right, it is also not possible to
“prune” a Unitary patent by letting it lapse in some countries but not in others; something
which is possible for traditional European patents.
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A Unitary patent lapses 20 years after the date of filing of the European patent application,
provided that the patent has not been revoked beforehand. 62 Moreover, the Unitary patent
also lapses when the renewal fees and, where applicable, any additional fees have not been
paid in due time. 63
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The lapse of the Unitary patent for failure to pay a renewal fee is deemed to have occurred
on the date on which the renewal was due. 64
Licences of Right
Registration and Renewal Fees
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According to art.8 Unitary Patent Regulation, the proprietor of a Unitary patent may file
a statement with the EPO to the effect that the proprietor is prepared to allow any person
to use the invention as a licensee in return for appropriate consideration. 65 The declaration
will be registered in the EPO database, 66 which will enable any interested party to establish
which Unitary patents are available for such licences of right. This may be especially attractive
to universities and public research organisations which are looking for the option to
commercialise their Unitary patents.
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According to art.11(3) Unitary Patent Regulation, the renewal fees will be reduced after receipt
of a statement sent to the EPO to the effect that the proprietor is prepared to allow any person
to use the invention as a licensee. This is confirmed by recital 15 Unitary Patent Regulation,
where it is stated that in order to promote and facilitate the economic exploitation of an
invention protected by a Unitary patent, the proprietor of that patent should be able to offer
it to be licensed in return for appropriate consideration, more particularly by benefiting from
a reduction of the renewal fees as from the date of the EPO’s receipt of such statement.
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This principle is reflected in r.12 Unitary Patent Rules relating to the filing of the statement
by the patent proprietor relating to a licence. The amount of reduction will be 15 per cent
according to art.3 Rules relating to Fees for Unitary Patent Protection. 67
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According to r.12(2) Unitary Patent Rules, the statement that the patent proprietor is prepared
to allow any person to use the invention as a licensee may be withdrawn at any time.
A communication to this effect has to be sent to the EPO. If the statement is withdrawn, it only
becomes effective from the time when the amount by which the renewal fees were reduced is
paid back to the EPO.
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art.3(2) Unitary Patent Regulation.
r.14(1)(a) Unitary Patent Rules.
r.14(1)(b) Unitary Patent Rules and art.11(2) Unitary Patent Regulation.
r.13(3) Unitary Patent Rules.
For further information on licences of right see chapter 3 (Transactions with Unitary Patents and European Patents Subject to
the Court) paragraphs 3-43 to 3-60.
r. 16 (1) Unitary Patent Rules.
This compares unfavourably to the reduction of 50 per cent offered by many national patent offices where a national patent
is endorsed with a licence of right.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 21
