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The Unitary Patent and the Unified Patent Court: what you need to know

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The Unitary Patent (UP) and the Unified Patent Court (UPC) is the biggest shake-up of the European patent system since the 1970s. It provides a new system for granting and litigating patents in Europe, which came into force on 1 June 2023.

Our guide explains what you need to know about the UP and UPC and what owners of European patents need to consider.

Unitary Patent

What is the Unitary Patent?

The Unitary Patent (UP) supplements the existing European Patents (EPs). A Unitary Patent is a European patent with unitary effect. Procedures for the filing and prosecution of European patents remain the same. Upon grant, proprietors have the choice whether to validate their European patent in selected EU contracting member states and obtain a bundle of national rights, or elect for a Unitary Patent, effective in all participating member states who are signatories to the UP Agreement.

In which countries does the Unitary Patent apply?

The Unitary Patent provides a pan-European right effective in 17 EU Member States. The UP does not apply to the United Kingdom, so holders of European patents seeking protection in the UK still need to validate their EP in the UK upon grant.

A map showing the seventeen member states of the Unified Patent Court (UPC.)

Benefits of the Unitary Patent

The Unitary Patent system is designed to reduce complexity and costs. There are a number of benefits for proprietors in requesting a UP, opposed to an EP validated in multiple states:

  • Translations

Unlike the current European patent procedure where translations are required for national validation of European patents in EU member states, translation of the patent specification into only one other language of European Union is required.

  • Official fees

There is no official fee for requesting unitary effect.

  • Renewals

A single renewal fee is payable to the European Patent Office. Renewal fees correspond to the combined renewal fees due in the United Kingdom, Germany, France and Netherlands. A UP should cost less than an EP validated and maintained in four of the 24 EU member states.

  • Enforcement

Patents can be revoked across the whole of Europe, rather than having to litigate in national courts (and associated cost savings).

Unified Patent Court

What is the Unified Patent Court?

The Unified Patent Court (UPC) is a single patent court covering 17 countries, all of whom are European Union Member States who have ratified the UPC Agreement.

The UPC has jurisdiction over the following patent rights:

  • European patents and Supplementary Protection Certificates (SPCs) based on (unless opted-out)
  • European patents with unitary effect (unitary patents) and SPCs based on unitary patents

Where is the UPC located?

The UPC consists of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance has a central division, located in Paris and Munich, and local and regional divisions. The central divisions are divided by subject matter, with court location determined by the patent technology area.

Any Contracting EU Member State may set up a local division, or together with other states set up a regional division. The Court of Appeal and the Registry, which handles administration of the court, is based in Luxembourg.

Opting out of the UPC – the “transition period”

The key consideration for applicants and holders of European patents and SPCs is whether to opt out their patents and SPCs from the jurisdiction of the UPC.

We are currently in a “transition period” during which applicants or holders of European patents applied for or granted prior to the end of the transitional period have the option to opt out of the UPC, provided an action has not already been brought before the UPC. The transitional period is seven years, but this may be extended by another seven years. After the end of the transition period, it will no longer be possible to opt out patents from the UPC. This transition period follows an initial three-month “sunrise period” prior to the UPC coming into effect, which ended on 1 June 2023.

A timeline showing the sunrise period (March 2023-June 2023), followed by examples of 7 year transitional periods.

 

Once a patent has been opted out of the UPC it is possible to opt back in, however a second opt-out is not permitted. The opt-out will remain in force for the lifetime of the patent.

The opt-out concerns the European patent and all national patents derived from it, validated in contracting member states.

Where a patent has been opted-out, the opt-out automatically extends to an SPC based on the opted-out patent.  Where the patent has expired, the expired patent can be opted-out and this will automatically extend to the SPC based on the opted-out expired patent.

Where there are multiple applicants or patent holders, all parties must act in common to exercise the opt-out.  For SPCs, where there has been an assignment so that the holder of the SPC is different from the patent holder, both the SPC holder and the patent holder must act in in common to exercise the opt-out.

It is important to note that unitary patents and SPCs based on unitary patents cannot be opted out of the UPC.

Considerations for holders of European patents and applicants for European patents

The key consideration for holders and applicants is whether to opt out from the UPC. Now is the time to review existing patent portfolios and pending applications and make that decision.

Please contact your usual Forresters attorney or Jack Gunning for advice in relation to the UP and UPC.