The Unitary Patent (UP) system and the Unified Patent Court (UPC) are expected to come into existence on 1 June 2023.

The UPC
The UPC will hear cases (e.g., of patent infringement and invalidity) based on European patents, and the judgments of the court will have effect in all participating EU countries. Currently, the following 17 EU countries have signed up to the new system: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

In the current system, which will exist in parallel with the UPC system, actions, such as enforcement and revocations, of European patents can only be brought in each European country individually. Not only does this require time and money, it can – and often does – lead to different legal judgments in different countries.

The new system aims to offer an alternative with a view to reducing cost and uncertainty.

The UPC will have jurisdiction over existing and future European patents which have not been “opted-out” of the court’s remit, as well as Unitary Patents obtained under the Unitary Patent system which will launch on the same day.

The UPC will have central divisions in Munich and Paris, and local divisions in other European cities. A central court of appeal will be located in Luxembourg.

Proceedings before the UPC will be compact, with short timelines for actions and responses. 

“Opting-out”

Patent applicants and patentees will have the option of “opting-out” of the UPC, i.e., choosing that their European patents and patent applications not be subject to the jurisdiction of the UPC. If opted-out, a European patent can only be litigated before national courts in separate European countries.

Opting-out will only be possible for European patents which are granted and nationally validated under the existing system.  European patent applications may also be “opted out” before they are granted. Unitary Patents will be handled exclusively by the UPC and cannot be opted-out.

Opting-out can occur at any time prior to the expiry of a transitional period of at least 7 years which starts at the date on which the court is established. Opting-out may be requested at any time during the transitional period unless proceedings before the UPC have been initiated. If a patent is not opted-out within this period or if proceedings before the UPC have been initiated, it will remain under the jurisdiction of the UPC.

Also, if a third party, such as a competitor, launches an action at the UPC before the European patent in question has been opted-out, the case will be heard at the UPC.

An opted-out European patent can be opted-in (i.e., the opt-out withdrawn) once, so that it again falls under the jurisdiction of the UPC. However, if a third party launches an action at a national court before the European patent is opted-in, the patent will remain opted-out. 

The European Unitary Patent
Alongside the European Unified Patent Court (UPC), a European Unitary Patent system will come into existence. The Unitary Patent system aims to provide uniform patent protection in the participating countries.

The Unitary Patent is an alternative or supplement to the existing validation process for European patents. The current system for validation of a European patent requires payment of fees to each national patent office in the countries where the European patent is to exist as national patents and often requires translations into national languages. Once the EP opposition period has expired, such national patents can only be challenged or revoked independently in each country.

Participation in the Unitary Patent system is limited to EU countries which are also participating in the Unitary Patent Court. For countries which are contracting states to the European Patent Convention (EPC), but which are not participating in the Unitary Patent system, national validation will still be required. These include, e.g., UK, Spain, Norway, Switzerland, and Turkey.

A Unitary Patent is obtained from a newly granted European patent by filing a request that the European patent has a unitary effect in the participating Member States along with a single, full translation of the patent text.

Renewal fees for the Unitary Patent are to be paid centrally and are to be based on the aggregated renewal fees for the four countries where European patents were most often validated in 2015. Annual renewal fees start from 35 EUR for the second year and increase to up to 4,855 EUR for the 20th year.

The fate of a Unitary Patent – whether limited, transferred, revoked, or allowed to lapse – will then be the same in all the participating Member States. Infringement and revocation proceedings for the Unitary Patent will be conducted before the Unified Patent Court, cf. the above.

A summary of the new European patent system is provided below.

1. The unitary patent will be applied for and granted by the EPO – just as European patents are today. However, in contrast to current European patents, the unitary patent does not need to be registered in each country in the agreement.
2. When the system is fully implemented, unitary patents will cover all 27 EU States. Spain and Poland have – however – chosen to remain outside the new system for now.
3. As the EPO continues to be responsible for grant of European patents, there will be no change in what can be patented – the new system only concerns what happens post-grant. Software as such, business methods and human embryos can therefore still not be patented in Europe.
4. When a European application is approved for grant, the applicant must choose between
    a unitary patent, in which the patent enters into force in all member states, or
   b.    putting it into force in each country, by “validating” it in various administrative processes.
5. The new unitary patents should be seen as further options for a patentee to obtain patent protection – they are supplements to national patents and the existing European patents, which one will still be able to apply for and obtain.
6. Existing, granted European patents cannot be converted to unitary patents, but – for those European patent applications which are pending when the new system enters into force – one will be able to choose between giving these granted patents unitary character, and validating them as per the current European patents.

UP/UPC in general
In the future European patent court system, enterprises, universities and inventors will be given the possibility of representation by European Patent Attorneys having obtained an additional qualification. Users of the Unified Patent Court may thereby benefit from having their case including its scientific aspects presented to the Court by a technically qualified patent attorney.

Many future court disputes will require teams of patent attorneys and litigation lawyers. Therefore, so far 11 of our European Patent Attorneys have completed a one-year diploma course at the University of Strasbourg in France, whereby we fulfill the requirements for the right to representation before the Unified Patent Court. We trust that this additional qualification will not only enable us to represent our clients before the Court, but that it will also allow us to provide counselling in relation to contentious matters at the highest level under the new European regime.

More information on the Unified Patent Court is available here: The Unified Patent Court | Unified Patent Court (unified-patent-court.org)