In December 2012, the EU Council and European Parliament approved the so-called ‘Unitary Patent Package’ consisting of:
- the creation of a Unitary Patent (and accompanying translation regime); and
- the creation of a Unified Patent Court.
The European Unitary Patent (EUP) will be a European patent, granted by the EPO, having ‘unitary effect’ across all of the participating countries. It will be a single, indivisible, right – like a EUTM or RCD. The Unified Patent Court (UPC) will provide, for the participating countries, a centralised forum for the litigation of European patents, including the new Unitary Patents.
In principle, the UPC will open its doors and the EUP will become available to European patent applicants three months after the UPC Agreement comes into force. However, at present it is not clear when this will happen.
The UK ratified the UPC Agreement in April 2018. However, the government has now indicated that it will not seek to participate in the unitary patent system, since participation in a court which is subject to EU law is incompatible with their stated aim of independence from the jurisdiction of the CJEU, post-Brexit. This causes a problem for the agreement as it stands, since London is expressly written into the agreement as a location for one of the Central Division courts.
The non-participation of the UK is also likely to make the unitary patent system much less attractive and hence has thrown the future of the project further into doubt.
In addition to the uncertain effects of Brexit, there is also an outstanding legal challenge to the UPC legislation in the German Federal Constitutional Court. These factors have delayed ratification of the UPC agreement by Germany, which is a prerequisite for it to come into force.This page sets out briefly how the European Unitary Patent and the Unified Patent Court are expected to operate, when and if they eventually become a reality. For more information, please contact us.
Which countries are part of the UPC and unitary patent?
Out of the 28 current EU countries, 25 agreed to participate in the Unified Patent Court and the European unitary patent scheme. They are listed below:
As noted above the UK has now said that it will not participate, having left the European Union.
Spain has not signed up to the unitary patent package: in principle, they could join at any time, but this is not currently considered likely. Poland subscribed to the original EU decision approving the unitary patent package, but did not actually sign the UPC agreement; they could in principle join at any time but have indicated that they will not do so until after the system is up and running. 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.
The unitary patent will cover all of the participating countries above that have also ratified the UPC Agreement at the time of requesting the unitary patent. These are known as the Contracting Member States. Decisions of the Unified Patent Court will affect unitary patents and also traditional European patents in the Contracting Member States (unless opted out – see below).
As at the start of 2019, the countries that have ratified the UPC Agreement are given below. In addition, Germany must ratify the UPC Agreement in order for it to come into force and so will be covered by the unitary patent when it becomes available.
What about the other EPC countries?
Countries who are Member States of the EPC, but who are not in the EU (for example, Switzerland and Norway) are not eligible to join the Unitary Patent or Unified Patent Court. European patents granted by the EPO will still cover these countries, but they will need to be validated, maintained, and enforced separately in each of them, as now.
The Unitary Patent
How will I get a European Unitary Patent?
A European patent application will be filed at the EPO in the usual way.
When the application is granted, the applicant will then be able to choose whether or not the resulting European patent should have ‘unitary effect’ for the Contracting Member States. A request for a UP must be filed at least 1 month before publication of grant. There will be no official fee for the request.
There is no way to convert currently granted European patents into UPs.
It will still be possible, as an alternative to unitary protection, to validate separately in any or all of the Contracting Member States, as now. If a EUP is requested, separate validation will in any case still be necessary for countries that have not (at that time) ratified the UPC agreement.
How much will a Unitary Patent cost?
The cost of filing and prosecuting the European patent application at the EPO should be the same as at present.
The renewal fees for the unitary patent have been set by the EPO (see here for details). The level of the renewal fees is intended to represent roughly four times the average renewal fee for a single country. Therefore, for applicants who usually validate their European patents in only a few countries (e.g. only in the UK, France and Germany), the unitary patent may not represent good value, especially since it now appears that the unitary patent will not cover the UK.
During a transitional period, there will be a requirement to translate the whole text of the unitary European patent into at least one other language, which will add to the cost. However, in the long run it is intended that machine translations will make the patent automatically available in all EU languages, so there will be no need for the patentee to provide any translations in order to obtain a EUP. The transitional period will last until the quality of machine translations is deemed to be good enough for this purpose, up to a maximum of 12 years.
What will be 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 UP (such as Spain).|
|Should cover at least 16 countries, including Germany and France.
|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 UP 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?
At present, European patents must in principle 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 European Unitary Patent will be conducted in the new Unified Patent Court.
Within the Contracting Member States, the Court will also have exclusive competence to decide on matters of infringement and validity relating to ‘traditional’ European patents (i.e. not having unitary effect) and also on matters relating to Supplementary Protection Certificates (SPCs) granted on these patents.
So, once the 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 Germany 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 the 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 (see below) will therefore be very 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 will the Unified Patent Court be situated?
The first instance Court will be split into local and regional ‘divisions’ (to be 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.
Under the current UPC Agreement, the Central Division will be based in Paris (for Physics and Materials subject matter) and Munich (for Mechanical and Engineering subject matter). The current agreement also specifies a Central Division court in London (for Life Sciences and Chemistry subject matter), however this will need to be changed if the UK does not participate in the unitary system.
The Court of Appeal for the Unified Patent Court will be situated in Luxembourg.
How will the opt-out procedure work?
All European patents will automatically fall under the jurisdiction of the UPC when it comes into force, 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 will only be available for the first seven years (extendable up to 14 years, on review after 5 years) from when the UPC comes into force.
- The opt-out procedure will be 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 will also be possible to register an opt-out for a pending European application: the opt-out will apply automatically to the relevant European patent once granted.
- There will be a ‘sunrise’ period before the UPC actually comes into force when proprietors will be able to lodge their opt-out, starting from the date when the UPC Agreement comes into force.
- 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).
- A single request opting out more than one patent (“bulk” opt-out) will be possible although the details of this are not yet confirmed.
- There will be 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 Contracting Member States. The earliest possible date for this will be seven years after the UPC comes into force. After this time, the only way to avoid the UPC will be to file national (e.g. FR, DE) applications.
What will be 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 will have pool of experienced IP judges from around Europe – the judges will 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.
Existing EPs do not become “EUPs” by opting in to the UPC.
This information is simplified and must not be taken as a definitive statement of the law or practice.