01. Juni 2023 | UPC

1. What is a Unitary Patent (UP)?

A Unitary Patent is a single patent right whose scope extends to the EPC countries which are both part of the EU and have signed and ratified the UPC Agreement. Currently, 17 EU countries have ratified the UPC agreement, with a likelihood of more countries joining eventually.

There will be no change in filing, prosecution and grant of a European patent by the EPO. Similarly, the current opposition and appeal procedures before the EPO will remain the same. The applicants have the option to file a request for a UP within one month from the publication of grant of the European patent.

The UP will co-exist alongside the national patent rights for non-UPC countries obtained through validation of the European patent.

2. What is the Unified Patent Court (UPC)?

The UPC is a new international court set up by the participating member EU countries to handle the validity and infringement actions in relation to all UPs exclusively. This exclusive jurisdiction will not start immediately. Currently, there is an initial 7-year transition period (which may extend to 14 years), during which, it is possible to „opt out“ classical European patents from the UPC jurisdiction (For more on Opt-out, see questions 12-14).

During this transition period and unless opted-out, the UPC shall also have jurisdiction to handle the validity and infringement actions in relation to all previously and newly granted European patents with respect to validated participating EU member countries.

3. When did the UP/UPC came into force?

The UPC came into force on June 1, 2023.

4. What is the structure of the UPC?

The UPC comprises:

  • a Court of First Instance (made of several local and regional divisions, and
  • a central division to be located in Munich and Paris (a third location for the central division will be in Milan) and,
  • a Court of Appeal located in Luxembourg.

5. What will be the language of the UPC?

The proceedings in the Local and Regional Division will be in one of the official languages of the Local/Regional Division, or, with the approval of the parties, in the language in which the patent was granted (either English, German or French). Alternatively, one of the official language of the EPO could also be used. As the majority of the EP patents are granted in English, it is likely that the proceedings before the Local/Regional divisions could be in English even for Local/Regional Divisions not having English as an official language.

The language of proceedings in the Central Division will be the language in which the patent was granted.

At the Court of Appeal, the proceedings shall take place in the language of the first instance proceedings, or, with the parties’ approval, in the language in which the patent was granted.

6. How is it different to the current European patent system?

Currently, when the EPO grants a European patent, it takes effect as a set of national patent rights in the individual validated countries and are enforced before each of the respective national courts.

With the UP system and on request, a patent granted by the EPO will take effect as a single granted patent covering all the participating EU member countries. This UP is enforceable and revocable throughout all of the participating EU member countries in a single action before a single court (UPC).

7. Why UP/UPC?

Traditionally, most of the European patents are only validated in a selective small number of countries (e.g., three or four). The objective of the EU legislators was to provide an opportunity for the applicants who wish to validate a European patent through a wide selection of member countries in a cost-effective way. This is now achieved by simplifying the validation requirements, limiting translation requirements and reducing renewal fees to an equivalent of the “Top Four” countries.

Since only a single litigation proceeding is required to determine the validity and infringement of the patent in the UPC member countries, this will, in many cases, further reduce the post-grant costs compared to the necessity of multinational law suits as before.

8. Who grants the UP?

The EPO grants the UP. The procedure until grant of the patent by the EPO continues to be the same as it is for classical EP patents. After grant, the patentee may elect for the European patent to become a UP with respect to the participating EU member countries. For non-participating EU countries as well as for non-EU countries, national protection may be achieved through classical country-wise validation.

9. How do I apply for a Unitary Patent?

Obtain a granted European patent: the procedure of filing for a European patent application and the prosecution before the EPO remain the same.

On grant of the European patent: the patentee can request for the European patent as a UP in the participating EU member countries as a single UP designation and validate in any other EPC countries, including the extension states via the classic validation route.

Get more information on this topic here.

10. What is the cost of the Unitary Patent?

The official fees until grant are no different than current EP system. The renewal fees of the UP has been set at the combined renewal fees due in the four countries (DE, FR, UK and NL) where European patents were most often validated in 2015. For UPs, translation costs are considerably lower since translation into only one language is required. Thus, if the patent is to be validated in more than four UPC member countries, a UP could be more cost-effective in comparison to payment of renewals in validated EPC countries and considering translation costs.

11. What countries are covered by the UP/UPC?

The original intention was that the UP shall cover ALL of the 27 EU Member Countries. This may still be the case in the future.

However, as of today, the 17 countries participating in the UPC system (when it starts) are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

7 countries which may still join the UPC system are: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia.

Three countries, namely, Spain, Poland and Croatia are currently not participating in the UPC system.

Due to Brexit, the UK has left the EU. Consequently, the UPC system shall not cover the UK (one of the top three countries in which EP patents are validated).

The EPC has 38 member countries, including 11 non-EU countries. Those non-EU countries, namely, Albania, Iceland, Switzerland, Lichtenstein, North Macedonia, Monaco, Norway, San Marino, Serbia, and Turkey, and the UK are not covered by the UPC system. Patent protection for these countries may only be achieved via the traditional route (classical EP or national route).

Get more information here.

12. What is an opt-out?

The UPC will have exclusive jurisdiction over all pending European patent applications and all granted European patents in the UPC member countries. However, during the transition period (7 years as currently planned, may be extend to 14 years), „opt-out“ provides the patentee an option to withdraw from the UPC jurisdiction.

The opt-out will be valid for the lifetime of the patent and the patent will fall into the jurisdiction of the national courts in which the patent is validated. It is possible to withdraw an opt-out as long there are no open proceedings in a national court.

Various factors affect the decision to opt-out, ranging from costs to the applicant’s patent portfolio. Each patent and the patentee’s situation is unique and requires a thorough analysis before deciding to opt-out. For any queries on this topic, please contact us at upc@grunecker.com. Our UPC team is happy to walk you through this maze of complex analysis.

Get more information here.

13. How do I opt-out?

The request to opt-out during the planned transition period of 7 years can be submitted by the patent attorney (see also question 16), when authorized by the true owner of the patent. The request can be submitted via the UPC case management system after publication of a European Patent application or after grant of a European patent. There are no official fees to request opt-out.

14. How flexible is the opt-in/opt-out process? Can I change my mind?

Yes, to a certain degree. During the transitional period, you can choose to withdraw an opt-out as long as there are no open proceedings in a national court. But after withdrawing an opt-out, it is not possible to opt-out again.

15. Brexit - what now for the UK and the UPC?

Since the UK is no longer part of the EU, it is also no longer part of the UPC agreement and the UP will not cover the UK.

It is, however, still possible to obtain protection in the UK via European patent validating the UK, or via the national patent route. The UK Courts will have sole jurisdiction over the validity and infringement of the UK patent. For questions of validity and infringement of the European patent validating the UK or the national UK patent, the UK courts will have sole jurisdiction.

16. Who can represent me before the UPC?

Any attorney authorized to practice before a court in any of the participating EU countries as well as European patent attorneys with additional litigation qualifications are allowed to represent the parties before the UPC.

17. What are pros and cons of the UP/UPC?

The UP provides many advantages to the patentees, but not without potential disadvantages.

Single, cost-efficient renewal fee payment, reduced validation and translation fees, single litigation proceedings, central administration and widespread EU patent rights are undeniable benefits to the patentee.

For patentees who normally validate in many EPC countries, especially countries that require extensive translations, the UP provides an obvious cost-efficient advantage. Conversely, patentees who tend to usually validate in limited EPC countries (less than 4 EPC countries), the renewals and translation costs do not offer the desirable advantage.

Central enforcement of the UP by the UPC also comes with the risk of losing the rights in all participating countries via one single action.

For the patentees, it is important to find the right balance between cost-effectiveness and associated central revocation risks. Grünecker’s UPC team is here to help you in making your decision. For any queries, please contact us at upc@grunecker.com.

We also discuss this in more detail here.

18. What do I have to do now?

  • Be informed about UP/UPC and be prepared for the changes underway
  • Perform a patent portfolio analysis to make the opt-out/opt-in decision
  • Get in touch with our UPC team (upc@grunecker.com) now to help you through this transition