After decades littered with failed attempts, the European patent with unitary effect (Unitary Patent) and the Unified Patent Court (UPC) have become a reality. Germany ratified the UPC agreement on 17 February 2023, which launched the countdown for the UPC Agreement to come into effect on 1 June 2023.
The Unitary Patent and UPC will fundamentally change the patent landscape in Europe by offering users of the European patent system a new option for patent protection (the Unitary Patent) and for the settlement of patent disputes across Europe (the Unified Patent Court).
A) The Unitary Patent
The Unitary Patent aims to allow patent proprietors to obtain uniform territorial protection across all participating EU member states, by filing a single request with the European Patent Office (EPO). The procedure is designed to be very simple and straightforward to use, and as a consequence the cost of obtaining patent protection throughout the participating states will be lowered. In particular, different “validation” requirements in different states are dispensed with, and a single annual renewal fee will be payable to the EPO.
Unitary Patents will be obtained via the existing European patent system, run by the EPO: i.e. a single patent application is filed with the EPO (in either English, French or German) which is examined and, if found to meet the necessary criteria, granted as a European patent.
At the grant stage, the patentee must decide in which of the 38 contracting states they wish the patent to be effective. In addition to the current procedure (whereby the European patent is validated as a separate national patent in each of the states of interest) the Unitary Patent will give patentees a further option, by allowing validation of European patents to cover all the EU member states which have signed the UPC Agreement as a single patent.
Further details as to the procedure for obtaining a Unitary Patent, its coverage, costs, and renewal fees are available here.
Important: transitional provisions for currently pending European patent applications
Unitary Patents are only available for European patents granted on or after 1 June 2023. With this in mind, two transitional measures are in place for existing European patent applications which have already successfully passed through examination by the EPO but have not yet been granted:
Early request for unitary effect
– an applicant can file an early request for unitary effect, following which the EPO will register unitary effect immediately at the start of the system (provided the formal requirements are met).
Delay in issuing grant decision
– an applicant can request that the EPO delays issuing a decision to grant a European patent so that grant occurs after the start of the Unitary Patent system and the patent is thus eligible for Unitary Patent protection.
Please contact us for further advice regarding these important transitional provisions.
B) The Unified Patent Court (UPC)
The UPC is a new European patents court for conducting litigation involving European patents, for example patent infringement and revocation proceedings.
Currently, European patent litigation is conducted by national courts in the countries where the European patent was validated. The new UPC will have jurisdiction over new Unitary Patents, and by default will also have jurisdiction over all existing European patents effective in participating EU Member States.
For owners of existing European patents this means that proceedings for infringement of a patent across a number of territories may be brought centrally before the UPC in a single action. However, it also means that a third party will be able to seek/counterclaim for revocation of a European patent in all states in which it was validated through a single revocation action filed with the UPC. Given that the UPC is currently untested, with no case law, many patent proprietors are approaching the UPC with caution.
Important: opting-out of the UPC
Patent proprietors who would rather their patents remain outside of the new UPC system can “opt out” their existing European patents from the UPC system. Opted-out patents will fall under the jurisdiction of the various national courts, as is currently the case.
A three month “sunrise” period started on 1 March 2023 during which patent owners can opt out their existing European patents, and pending European patent applications, and thus avoid the jurisdiction of the UPC before it comes into effect. Opting-out will continue to be available after the UPC becomes operational, but will only be possible if no case involving the patent has been brought before the UPC. Thus, to guarantee avoidance of the UPC jurisdiction, a patent must be opted out during the sunrise period.
What should I do now?
We recommend the following actions are considered in preparation for the start of the UPC:
Review your European patent portfolio
. Are the rights held in the correct name? Is the owner indicated on the European or national register of patents the true owner? Do the registers need updating?
Decide upon an opt out strategy
, for the sunrise and transitional periods. Which patents should be opted out, and which left in? Should all patents be opted out, left in, or considered on a case-by-case basis? Should any divisional applications be filed, to allow for patents in a given family to be both opted out and opted in? Are any of the patents co-owned with a third party, and can an opt out/leave in strategy be agreed between the parties?
Please contact us for further advice regarding an opt-out strategy for your European patent portfolio.