The Unitary Patent and Unified Patent Court – Common FAQs
Q. When will the Unitary Patent (UP)/Unified Patent Court (UPC) come into force? What is the time scale for the introduction of the new system?
A. The UP/UPC will come into effect on 1 June 2023.
Germany deposited its instrument of ratification on 17 February 2023, as well as triggering the “sunrise period”. The sunrise period is particularly important for the registering of “opt-outs” which are addressed below.
Q. Does the UP replace the existing system for obtaining European patents?
A. NO! The UP provides an additional option for patentees. It will still be possible to obtain classical European patents instead of a UP, and indeed this will be essential to obtain protection in those countries that are not part of the UP but which are members of the European Patent Organisation.
Q. What is a UP?
A. A UP, formally known as a “European patent with unitary effect”, is a single patent for all European Union states that are participating in the UP system and that have ratified the Agreement on a Unified Patent Court (UPC Agreement). It is obtained through exactly the same prosecution procedure as a classical/traditional European patent, but after-grant results in a single patent for the participating member states, as opposed to the bundle of national patents that result from validation of a classical European patent.
Q. What are the benefits of a UP?
A. A UP permits a patentee to obtain a single patent in multiple countries for a lower cost than would be possible by national validation, due to eliminating the costs of validation and the costs of individually renewing in each country. Furthermore, the patentee will be able to enforce the patent for all participating territories in a single action.
Q. Which countries are covered by a UP?
A. 17 EU countries have currently ratified the UPC Agreement and deposited their instruments of ratification. These are Austria, Belgium, Bulgaria, Denmark, Estonia, France, Finland, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
Other countries which have signed the UPC Agreement but not yet ratified are Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. These countries are unlikely to be covered in the short term.
Spain, Croatia, and Poland are EU members but are not participating in the UP at present.
Along with Norway, Switzerland, Turkey, and the other European Patent Convention, non-EU, member states, the United Kingdom is not participating in the UP.
Q. Will the UP save on costs?
A. The fees for renewal of a UP have been set at the combined total of the renewal fees of the four countries where European patents were most commonly validated in 2015. Patentees who previously validated in more than four or five countries will tend to save on renewal costs, while patentees who validated in fewer countries will find the UP more expensive, but will of course have protection in more territories.
Q. What is the procedure for obtaining a UP?
A. A UP is obtained by filing a request with the European Patent Office (EPO) at the latest within one month of the date of grant. During a seven-year transitional period it will be necessary to file a translation of the entire application into another EU language, including if the application is in English.
This means that UPs start as European patent applications filed with the EPO as now and prosecuted in the same way. It is only at grant that applicants will need to decide whether to obtain “classical” European patents through the system of validation that has long been in place or to elect a UP to cover the countries taking part in the new system.
Opposition and appeal procedures at the EPO are unchanged and will have the same effects for UPs as for conventional validations.
Q. How will I get protection in countries which are not participating in the UP?
A. Protection in other countries is unchanged. For example, if you wish to cover France, Germany, Italy, Spain, and the UK, you can request a UP to cover France, Germany, and Italy (and 14 other countries), and you can separately validate in Spain and the UK to obtain national patents (EP(ES) and EP(UK)) in those countries. You can of course validate to obtain separate French, German, and Italian patents as an alternative to the UP.
Q. Will UK (and other non-participating country) European patent attorneys be able to apply for UPs?
A. YES! The prosecution procedure for EPO patents remains unchanged and requesting a UP is simply another option (alongside validation) that your UK European patent attorney will provide.
Q. What is the role of the UPC?
A. The UPC is a new court system that will have jurisdiction over UPs, as well as over classical European patents in the participating countries, unless those classical European patents are opted-out.
Q. What does it mean to opt-out a patent (or patent application)?
A. For a transitional period of seven years, it will be possible to register an opt-out for a classical European patent with the UPC Registry, which will mean that any action relating to that patent will have to be taken in the national courts, and not at the UPC. In other words, the patent is removed from the jurisdiction of the UPC. It is not necessary to wait until grant to opt-out – a pending patent application can also be opted-out once published.
Q. Is it possible to opt-out individual patents, e.g. only the German part of the European part, while leaving other parts subject to the jurisdiction of the UPC?
A. No. An-opt out will be effective for the territories of all participating member states.
Q. Is it possible to opt-out a UP from the jurisdiction of the UPC?
A. No. UPs can only be litigated in the UPC.
Q. Why would you want to opt-out a patent?
A. This is a complex question. The UPC is a new court and there may be many reasons for not wishing to subject your patents to its jurisdiction. However, one of the main reasons for opting-out is that you do not wish your European patents to be subject to central revocation. In certain industries, for example the pharmaceutical industry, there has been some concern that the UPC could provide a forum for challenging and potentially revoking patents concerning “blockbuster” drugs across a large part of the EU in a single action. It has therefore been suggested that the pharmaceutical industry will opt-out all of its key patents.
Q. What will happen to the UPC if everyone opts-out all of their patents?
A. This is unlikely. Commentators have suggested that while the pharmaceuticals industry may opt-out its key patents, this will still leave a very substantial number of secondary patents, and the industry has expressed a desire to engage with the system with a view to shaping it. Furthermore, commentators suggest that other industries, such as the electronics and consumer goods industries, are far less concerned about opting-out their patents.
Q. When will I be able to opt-out my patent(s)?
A. We are currently in the “sunrise period”, which allows applicants to register opt-outs on their patents and pending applications.
Q. Will the UPC have jurisdiction over national (non-EP) patents in participating member states?
A. No. The UPC will have no jurisdiction over patents granted by national patent offices – only patents granted by the EPO.
Q. Will national courts in participating member states continue to have jurisdiction over classical patents granted by the EPO?
A. During a seven-year transitional period, the UPC and the national courts will have joint jurisdiction, unless the classical patents have been opted-out. After the seven-year transitional period, both classical and UPs will be under the exclusive jurisdiction of the UPC.
Q. How will the UP affect European patent applications which are currently being prosecuted?
A. There are many ways of delaying grant of European patent applications if you wish them to be eligible for the UP. The EPO has provided transitional measures to permit an early request for a UP, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance).
You can also continue to obtain protection in both UP and non-UP countries by filing directly at the national patent offices rather than at the EPO.
You can also register opt-outs for your pending patent applications as noted above.
Q. How will the UPC be organised?
A. The UPC will comprise a Court of First Instance, a Court of Appeal, and a Registry. The Court of First Instance will consist of several regional and local divisions, and a central division, with its seat in Paris, France and a section in Munich, Germany. The German section will hear mechanical and weapons cases and the French section will hear telecommunications, electrical, and other cases. Before the UK withdrew its ratification of the UPC Agreement, another seat of the central division was to be located in London, England. This section was to hear a broad range of cases, including pharmaceutical, biotech, chemical, agricultural, and medical devices. At present it is not clear if the case load that would have come to London will be split between Paris and Munich or if a further seat of the central division will be created in an alternative city. Milan, Italy and The Hague, the Netherlands have been discussed as possible candidates. The Court of Appeal will be located in Luxembourg.
Q. Does the Court of Justice of the European Union (CJEU) have a role in the UPC system?
A. The CJEU is the ultimate arbiter of EU law, so is available to rule on questions of EU law referred to it by the UPC.
Click here for more information on our UPC Knowledge Hub.