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

Our guide to the Unified Patent Court (UPC) and Unitary Patent

We can assist with obtaining Unitary Patents at the EPO. We also offer a full range of services before the UPC, from filing opt-outs for classical European patents from the jurisdiction of the UPC (as well as opt-ins), to UPC litigation services. For UPC litigation, we build a specialist team for each case, including working with litigation lawyers where appropriate. Get in touch ►

We have put together this introductory resource to provide answers to basic questions. However, we understand that there is no ‘one size fits all’ strategy. Your next steps need nuanced guidance and careful consideration which we are happy to provide, and we encourage you to contact us so we can facilitate this.

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, and 18 from 1 September 2024) of the (currently 39) 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.
 
(see page 2 for our introduction to the Unified Patent Court)

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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 has exclusive jurisdiction for litigating UPs. It is also 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 has 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. It is hoped that this will lead to more streamlined and cost effective litigation in Europe, but this will become clearer as the new court issues more decisions over the next few years.

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Frequently asked questions:

The Unified Patent Court (UPC) and Unitary Patent system came into force on 1 June 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). Romania (RO) will be available with effect from 1 September 2024, so a request for a Unitary Patent after this date will consist of 18 states. The system may be further expanded to other participating EU states later.

No. The addition of a new state will not change the territorial scope of existing Unitary Patents. The “First Generation” of Unitary Patents will therefore consist of the 17 initial states. The “Second Generation” of Unitary Patents where a request for unitary effect is from 1 September 2024 will consist of 18 states (see point above).

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 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, our patent attorneys are registered as Representatives before the UPC so we can assist with 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 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.