The Unitary Patent (UP) and Unified Patent Court (UPC)

Announcement

Exciting news that Germany has completed ratification of the Unified Patent Court Agreement (UPCA) which means that the new UPC court and European patent with Unitary effect (Unitary Patent) now come into effect from 1 June 2023 (and UPC “sunrise” period for opt-outs from 1 March 2023).

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We are here to help you navigate the upcoming changes to the European patent system, soon to be brought about by the introduction of the Unitary Patent (UP) and Unified Patent Court (UPC). It’s exciting to see the UP and UPC finally come into being, but we recognize that this presents patent holders and their advisors with new challenges.

We have put together this introductory resource to provide answers to basic questions, and are providing regular updates. However, there is no strategy that will suit every stakeholder. Your next steps need nuanced guidance and careful consideration. We encourage you to contact us so we can facilitate this.

Even if a European patent applicant or owner is not interested in patent litigation (or even in the introduction of the UPC), they must still prepare for the changes which will affect the management of all European patent portfolios.

Nick Bassil - Partner, LSC

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Unitary Patent

The Unitary Patent (UP) derives from a European patent application, and is effectively another “validation” to be optionally added at the grant stage in the place of certain individual countries under the current system.

The UP is a unitary right covering all UP states, which are a subset (of initially 17) of the (currently 38) countries potentially covered by a European patent. As a unitary right, the UP can be enforced and revoked as one across all the countries it covers. It also attracts just a single renewal fee and has reduced translation requirements.

There is a cost saving to be enjoyed by registering a European patent as a UP rather than validating it across all the corresponding European countries. However, for patentees that typically validate their patents in only a small number of countries, the UP may remain a more expensive option. A UP also comes along with a restriction to enforcing the patent via the new Unified Patent Court (UPC), and potential vulnerability to “central” revocation throughout the territories covered by the UP.

Unified Patent Court

The Unified Patent Court (UPC) is an entirely new forum for litigating patent disputes in Europe. It stands independent of the national courts, with Local, Regional and Central divisions spread across a number of European countries and its own Court of Appeal based in Luxembourg.

The UPC will have exclusive jurisdiction for litigating UPs. It will also be the default forum for litigating conventionally validated European patents, and patent owners who want to avoid this will need to actively “opt out” their European patents from the UPC’s jurisdiction.

The system offers the potential to settle disputes across all of the countries that are signatories to the UPC Agreement in a single set of proceedings. The UPC will have the power to reach decisions, including issuing injunctions and awarding damages, with effect across all of these countries. Likewise, there is the potential to have a patent revoked across all those jurisdictions in a single action. This may lead to more streamlined and cost effective litigation in Europe, but many of the details of the court are yet to be settled, so there presently remains some uncertainty about the effectiveness of the system.

Frequently asked questions:

The Unified Patent Court (UPC) has announced that the system will commence on 1 June 2023. The mechanism that brings the Unitary Patent (UP) into existence is the deposit of the instrument of ratification of the UPC Agreement by Germany, which has now happened. The UPC and Unitary Patent system will therefore now start on 1 June 2023, with the “sunrise” period for UPC opt-out requests starting on 1 March 2023.

Initially, the UP will cover 17 EU states: Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Slovenia (SI) and Sweden (SE). The system may be expanded to other EU states later.

No, the United Kingdom will not be covered by the Unitary Patent. It will continue instead to be covered as an individual “validation” country of a European patent, in common with many other countries that are members of the European Patent Convention but not the UPC Agreement, such as Norway (NO), Switzerland (CH), Spain (ES), Poland (PL) and Croatia (HR).

We will continue to represent clients before the European Patent Office on all matters, including the procedure for registering a European patent as a UP. In terms of UPC proceedings, we will handle the filing of opt-out requests at the UPC, as well as UPC revocation proceedings. For more complex matters, including patent infringement cases, at the UPC, we will continue to cooperate with individual specialist litigators (barristers) and other firms (e.g. solicitors in other European countries) to build specialist litigation teams, particularly in connection with patent enforcement litigation.

The UPC is intended to have exclusive jurisdiction for patent litigation relating to countries covered by the UPC system, whether the patent is registered as a UP or not. However, for a transitional period of 7 years from the start of the system, and potentially extendable to 14 years, it will be possible for patent proprietors to opt their conventionally validated European patents out of the jurisdiction of the UPC and to continue to use the national courts. In addition, the courts of any country that is not part of the UPC system will continue to decide cases concerning European patents in that country.

An opt-out is the name given to the mechanism for actively withdrawing a European patent from the jurisdiction of the UPC. If no opt-out is submitted for a European patent, then the UPC will be able to hear cases concerning infringement and validity of the patent (even if the patent is not registered as a UP). A UP cannot be the subject of an opt-out.

If an action is brought in relation to a patent before the UPC, this will prevent an opt-out being submitted and the UPC will have exclusive jurisdiction in all UP states covered by the patent. If an action is brought in a national court after an opt-out has been filed, the opt-out cannot be withdrawn, meaning that the national courts will have jurisdiction and the UPC cannot be used. In either case, this persists for the lifetime of the patent, and is known as “pinning” the patent to the respective court system.