The ‘Unitary Patent Package’ consists of:
- the EU Unitary Patent; and
- the Unified Patent Court.
The unitary patent (UP) is a European patent, granted by the EPO, having ‘unitary effect’ across all the participating countries. It is a single, indivisible, right – like an EUTM or RCD.
The Unified Patent Court (UPC) provides a centralised forum for the litigation of European patents, including the new Unitary Patents, in the participating countries.
The UPC Agreement entered force on 1 June 2023.
Which countries are part of the UPC and EU Unitary Patent?
Out of the 27 current EU countries, 24 agreed to participate in the Unified Patent Court and the EU unitary patent scheme. They are listed below.
However, it is important to note that unitary patents issued when the package first becomes available, in June 2023, will not cover all of the 24 countries listed below. This is because not all of these countries have yet ratified the necessary legislation. Those countries that have already ratified, and are thus covered initially, are indicated with an *.
The UK will not participate, having left the European Union.
Spain and Poland have not signed up to the unitary patent package.
Croatia acceded to the EU on 1 July 2013 (after the agreement was signed) and has not yet signed up, but is expected to do so eventually.
A UP covers all of the participating countries above that have ratified the UPC Agreement at the time of filing the UP request. These are known as the Contracting Member States. Decisions of the UPC will affect unitary patents and also traditional European patents in the Contracting Member States (unless the traditional European patent is ‘opted out’ – see below).
What about the other EPC countries?
Countries who are Member States of the EPC, but who are not in the EU (for example, the UK, Switzerland and Norway) are not able to join the Unitary Patent or Unified Patent Court. European patents granted by the EPO still cover these countries, but they need to be validated, maintained, and enforced separately in each of them.
The Unitary Patent
How do I get a Unitary Patent (UP)?
A European patent application should be filed at the EPO in the usual way.
When the application is granted, the applicant is now able to choose whether or not the resulting European patent should have ‘unitary effect’ in the Contracting Member States. A request for an UP must be filed at the EPO. The UP request must be made no later than 1 month after the date of grant.
(It is still possible, as an alternative to unitary protection, to validate separately in any or all of the Contracting Member States, as before. If a UP is requested, separate validation will in any case still be necessary for countries that have not (at that time) ratified the UPC agreement.)
No official fee is needed for the unitary patent request.
However, during a transitional period of at least six years (and up to twelve years), a translation of the whole patent specification is required. If the patent is written in English, then the unitary patent request must be accompanied by a full translation of the specification into any other official language of the European Union. If the patent is written in French or German, then the unitary patent request must be accompanied by a full translation of the specification into English.
While the translation is required, it will not have the status of a legal text in any post-grant proceedings. Rather, the translation is for information purposes only.
After the transition period, machine translations will be used instead.
How much will a Unitary Patent cost?
The costs before grant will not change. The same costs of filing, prosecuting and ‘renewing’ a European patent application at the EPO continue to apply.
After grant, the renewal fees for the EU unitary patent are shown here. The level of the renewal fees is intended to represent roughly four times the average renewal fee for a single country. Therefore, for those who want their European patents to have force a more than a few EU countries (e.g. more than France, Germany and Italy), the unitary patent should represent good value, especially if coverage in many EU countries is desired.
(SMEs, natural persons, non-profit organisations, universities and public research organisations that are resident in an EU member state number of patentees will benefit from a €500 ‘compensation scheme’ if the underlying European patent application and request for examination were filed in a language of an EPC contracting state besides English, French or German. This is intended to mitigate the costs associated with providing the translation during the 6-12 year transitional period mentioned above.)
What are the pros and cons of choosing a Unitary Patent?
A comparison of some of the pros and cons of the UP is provided below.
|Potentially reduced translation requirement
and cost in the transitional period (of up to 12 years) if normally validate in at least one contracting member states which is outside of the London Agreement.
|Potentially more translation requirements and costs during transitional period if normally only validate in London Agreement countries.|
|Reduced translation requirement and costs
after transitional period when Google translate is deemed sufficiently accurate.
|Potentially higher renewal fees if normally only validate in 3 countries.|
|Potentially reduced renewal fee if normally
validate in 4+ of the contracting member states.
|Will not include any EU country that has not ratified at the time of request for the unitary patent (such as Spain).|
|Will cover at least 17 countries, including Germany, France, Italy, Netherlands, Belgium, Austria and Sweden.
|Does not cover any EPC country that is not a member of the EU – therefore still need to validate as before in these countries if desired.|
|The unitary patent will always fall under the jurisdiction of the UPC.||Not possible to opt-out of UPC.|
|Compensation scheme will be available to
reduce the costs of translation for SMEs,
natural persons, non-profit organisations, universities and public research organisations that are resident in a contracting member state.
|Cannot selectively let states lapse during lifetime of patent to reduce renewal costs.|
The Unified Patent Court
What is the purpose of the Unified Patent Court?
Previously, European patents had to be litigated separately in each country where they have effect. For example, a decision by a French court on the validity or infringement of a particular European patent currently has no effect in Germany. Such ‘parallel’ litigation increases costs for the parties and occasionally results in inconsistent decisions from the different national courts, which is undesirable.
The countries signed up to the Unified Patent Court have all agreed to transfer jurisdiction over European patents and SPCs from their national courts to a single, centralised court.
This should reduce the amount of parallel litigation and increase legal certainty, since decisions on infringement or validity of European patents will be made by a single court and will then have effect in all participating countries.
What will be litigated in the Unified Patent Court?
All litigation involving the new Unitary Patent is conducted in the UPC.
Within the Contracting Member States, the Court also has exclusive competence to decide on matters of infringement and validity relating to ‘traditional’ European patents (i.e. European patents that have been ‘conventionally’ validated in selected European countries) and also on matters relating to Supplementary Protection Certificates (SPCs) granted on these patents.
So, now the UPC Agreement is fully in force, an action for revocation of an EP(FR) patent, for example, will be brought before the Unified Patent Court, not before a French court. Similarly, an action for infringement of a European patent in France will also be brought before the Unified Patent Court. Decisions of the Unified Patent Court will then have effect across all Contracting Member States.
For a transitional period however (initially 7 years, extendable on review), it will still be possible to start litigation concerning a ‘traditional’ European patent in a national court instead of in the UPC. Furthermore, during this transitional period, owners of European patents will be able to ‘opt-out’ of the unified system to ensure that proceedings concerning their European patents can only be brought in the national courts. Patents which have been “opted out” will stay opted out for their whole term, unless the patentee withdraws the opt-out (which they can do at any time).
The opt-out procedure (explained below) is important for anyone wishing to avoid the UPC in the early stages.
The national courts in the individual countries will continue to have jurisdiction over national patents, (i.e. granted by the national patent offices, not the EPO).
Where is the Unified Patent Court situated?
The first instance Court is split into local and regional ‘divisions’ (set up by the Contracting Member States) as well as a Central Division. In general, the Central Division will be responsible for most cases relating to validity, whereas infringement actions will generally occur in the local divisions.
The Central Division has seats in Paris and Munich. The Central Division will open a third seat in Milan in the near future.
The Court of Appeal for the Unified Patent Court is situated in Luxembourg.
How does the opt-out procedure work?
Now that the UPC is in force, all European patents will automatically fall under its jurisdiction (in UP Member States), unless the patent proprietor “opts out”.
Therefore, all proprietors have a choice of two options for each European patent:
- Do nothing (and thus automatically fall under the jurisdiction of the UPC).
- Opt out of the UPC.
The opt-out procedure has the following features:
- The opt-out procedure is only available for the first seven years (extendable up to 14 years, on review after 5 years) from when the UPC comes into force on 1 June 2023.
- The opt-out procedure is managed via an online case management system.
- An opt-out lasts for the life of the European patent (unless the opt-out is withdrawn – see below).
- It is also possible to register an opt-out for a pending European application: the opt-out will apply automatically to the relevant European patent once granted.
- Patents that become subject to proceedings in the UPC cannot then be opted out.
- Withdrawal of an opt-out can be done at any time (i.e. to take the patent into the jurisdiction of the UPC).
- It will not be possible to “opt out” for a second time (after an opt-out withdrawal).
- There is no official fee for opting out.
It is worth noting that, eventually, the UPC will have jurisdiction over all patents granted by the EPO (both UPs and conventional European patents) in the UP Member States. The earliest possible date for this will be seven years after the UPC entered into force (so, no earlier than June 2030). After this time, the only way to avoid the UPC will be to file separate applications at the national patent offices (e.g., separate FR, DE, IT applications).
What are the pros and cons of using the Unified Patent Court?
A comparison of some of the pros and cons of the UPC is provided below.
Single litigation action for “European”
New and untested system – it may take a few cases before procedure is optimised and several years before there is an established body of case law. As such, it will be difficult to predict chances of success/likely outcome of proceedings in the early years.
|Court have pool of experienced IP judges from around Europe – the judges are initially be appointed on a part time basis so that the best national judges are able to serve both the UPC and the national courts.||Central revocation action possible even after EPO opposition period has expired.|
Proprietors may gain early experience of the
Bifurcation of proceedings (i.e. infringement and validity decided separately) is possible, thus potentially leading to higher costs and differing claim interpretation for validity and infringement. To minimise the risk of divergent claim interpretation, bifurcation will only occur after the written proceedings have been concluded.
Proprietors can potentially shape early case law, and in particular may have an influence on a point of law that is currently unfavourable in national courts around Europe.
Risk of forum shopping – there is a risk that the different local/regional divisions will take different approaches with respect to claim interpretation and substantive law. Thus some local/regional divisions may appear to be more, for example, patentee-friendly than others and result in forum shopping. The Court of Appeal will need to function well to minimise any variations between different Divisions of the Court.
Patentees may face reduced difficulties in demonstrating infringement of method claims when different steps have been performed in different contracting states (reduced cross-border issues).
Existing EPs do not become “UPs” by opting in to the UPC.
This information is simplified and must not be taken as a definitive statement of the law or practice.