FAQs on unitary patent and UPC

Unitary patent (UP)

1. What is the UP and what are its advantages?
2. What is the difference between a European patent and a UP?
3. When will the UP start? 
4. Which countries are participating?
5. What are the costs of a UP?
6. Will I always have to use a UP in the EU, or do I have a choice?
7. At which point in the application process do I need to confirm my choice?
8. When would it be beneficial to opt for a EP or national validation instead of a UP? 
9. If a European patent has already been validated in individual countries, can it still be converted to a UP?
10. Are there any benefits to the UP if I only need patent protection in the Netherlands? 
11. Can I use the same claims for a UP?
12. Does opting for a UP have any effect on judicial procedures for revocation or infringement?
13. Can I sell a UP to another company?


UPC

1. When will the UPC (Unified Patent Court) start operating?
2. What are the advantages of the UPC?
3. Does the UPC have any disadvantages?
4. Which countries are participating? (ratification timing)
5. What are the main differences compared with the current system?
6. Will only new patents fall under the UPC?
7. What exactly is an opt-out, and can I opt back in at a later stage?
8. Does opting out or opting in incur any costs?
9. What is the deadline to submit my opt-out choice?
10. How do I submit my opt-out/opt-in choice?
11. Does an opt-out have any consequences on licence agreements?
12. Do I have to notify my licence holders about any opt-outs?

 Unitary patent (UP)

1. What is the UP and what are its advantages?
The UP, or unitary patent, is a new type of European patent. Once a European patent has been granted by the European Patent Office, it can be registered as a unitary patent. This means it will become valid across all participating countries in one fell swoop. Therefore, UPs do not need to be validated separately in each participating country, which means costs are reduced: fewer translations are needed and maintenance fees are lower. Moreover, the Unified Patent Court (UPC) will decide on infringement and validity of unitary patents, not the national courts.

2. What is the difference between a European patent and a UP?
Under the current system, European patents need to be validated in the individual countries after the European Patent Office has granted the patent. If the patent is not validated in a country as required, the patent will be invalid. Many countries require that the patent specification (or the set of claims) is translated for the validation. The UP offers an alternative way to give a European patent effect, by registration of the patent as unitary patent. This single registration is effective in all participating countries. For the other countries that do not take part in the UP scheme, European patents can still be validated in the usual way, i.e. per country.

3. When will the UP start?
Most likely on 2 May 2017.

4. Which countries are participating?
The United Kingdom, France, Germany, Austria, Belgium, Bulgaria, Denmark, Finland, Luxembourg, Malta, Portugal and Sweden will take part in any case. It is highly likely that the Netherlands will also participate from the beginning, and the same applies for Lithuania and Italy. Other countries can join at a later stage.

5. What are the costs of a UP?
There are annual maintenance fees, which are shown in the table below. The annual fees are roughly equal to the sum of validation costs in four countries under the old system. However, a UP will be valid in more than four countries, so the costs per country are lower. In addition, only one translation needs to be submitted for unitary registration.

6. Will I always have to use a UP in the EU, or do I have a choice?
Patent holders will still be able to choose whether they register any granted European patent as a UP, or whether they would prefer to validate it per country (as a so-called bundle patent).

7. At which point in the application process do I need to confirm my choice?
A European patent can be registered as a UP within one month after its grant is published. Thereafter, it can only be validated in the individual countries.

8. When would it be beneficial to opt for a EP or national validation instead of a UP?
If it is important to you that the national courts, and not the UPC, will decide on the validity of your patent and any infringement thereof, you should choose the national validation route. The reason is that there will be a transitional period (currently seven years) during which actions regarding European bundle patents can still be brought before the national courts. Thereafter this will be possible with a so-called opt-out. This period as well as the opt-out possibility does not apply for unitary patents.

9. If a European patent has already been validated in individual countries, can it still be converted to a UP?
No.

10. Are there any benefits to the UP if I only need patent protection in the Netherlands?
If that is the case, validation only in the Netherlands would be the better option.

11. Can I use the same claims for a UP?
A UP has the same claims as a granted European patent. Registration of a European patent is merely a formal procedure and the claims will not be changed during this procedure.

12. Does opting for a UP have any effect on judicial procedures for revocation or infringement?
Yes. The UPC has exclusive jurisdiction for UPs. National courts may not decide on any infringement or the validity of UPs. Hence, the opt-out possibility which exists for validated European patents, does not exist for unitary patents. This means that for Ups, the patent proprietor cannot opt-out from the UPC.

13. Can I sell a UP to another company?
Yes. UPs can be sold. They can also be used as security for loans. However, a UP can only be assigned for all countries together. It cannot be assigned for the part in one country only. Licences on the other hand can also be granted per country. Moreover, there will be a single European register for unitary patents, Hence, checking who is the registered proprietor of a UP will be easier.

UPC

1. When will the UPC (Unified Patent Court) start operating?
The UPC will start at the same time as the UP, which is likely to be on 2 May 2017.

2. What are the advantages of the UPC?
The UPC’s biggest advantage is that a single European court will now have the power to decide validity and infringement cases for all the participating states. Hence, it will in principle no longer be necessary to litigate about the same patent in each country separately.

3. Does the UPC have any disadvantages?
It may be the case that proceedings need to be held before the UPC in a foreign language, and (at least partly) dealt with outside of the Netherlands. In addition, the court fees are much higher compared to the current levels in the Netherlands.

4. Which countries are participating? (ratification timing)
Currently, ten of the required thirteen countries have ratified the agreement (Austria, Belgium, Bulgaria, Luxembourg, France, Finland, Sweden, Denmark, Malta and Portugal). The ratification processes in Lithuania, the Netherlands, Italy, the United Kingdom and Germany are at an advanced stage, and these countries are highly likely to participate in the UP/UPC system from the beginning. Spain, Poland and Croatia are not taking part for the time being. It is unclear what progress has been made as regards ratification in other countries.

5. What are the main differences compared with the current system?
The main difference is that UPC judgments on European patents will apply in all participating countries. Another difference is that the UPC is an independent international court, which is not subject to any other national. This means that cases will be heard in the language of the country where the court is based, or in English, German or French. Holding proceedings in Dutch will only be possible in the Dutch (and most likely the Belgian) branch of the UPC.

Another difference is that exclusive licensees will have the authority to start proceedings at the UPC.

6. Will only new patents fall under the UPC?
No. The UPC also has the authority to deal with disputes regarding existing European (bundle) patents. However, while disputes about unitary patents will always be heard by the UPC, for normal European patents it will remain possible - during a transitional period at least - to choose whether are brought before the UPC or before national courts. It is even possible - in the form of an opt-out - to take a European patent entirely out of the UPC. This opt-out possibility is not available for unitary patents.

7. What exactly is an opt-out, and can I opt back in at a later stage?
If an opt-out is requested for a European patent or patent application (except for unitary patents), it will become impossible to bring any disputes regarding that patent before the UPC. The effect of this opt-out is to force any parties looking to start revocation proceedings against the patent to do so via the national court(s). 

If an opt-out has been requested for a patent, it will remain excluded from the UPC’s jurisdiction for the lifetime of the patent, even after the transitional period. However, the patent proprietor can request an opt-in to bring the patent back under UPC authority. A second opt-out after an opt-in is however not possible.

If an opt-out has been requested for a pending patent application during the examination procedure, and if then a request for unitary effect is submitted once that patent is granted, the opt-out will automatically be revoked.

8. Does opting out or opting in incur any costs?
There are no official fees for opt-out requests. You can do this yourself, or authorise a third party to do so on your behalf. If a patent has multiple proprietors, the opt-out request should be submitted jointly by all of them. In addition, any errors in the opt-out request (for example an error in the name of a patent proprietor) may invalidate the opt-out.

9. What is the deadline to submit my opt-out choice?
The opt-out can be requested during the entire lifetime of the patent or its application, until to the end of the transitional period (seven years after the UPC’s start, possibly to be extended by another seven years). To prevent a flood of requests on the UPC’s first day of business, the possibility to register opt-outs will be opened up about half a year beforehand (during the so-called sunrise period).

10. How do I submit my opt-out/opt-in choice?
We will inform you in good time about the earliest possible starting date for opt-out requests. Once known, you can instruct us to deal with this on your behalf, or you can do so yourself.

11. Does an opt-out have any consequences on licence agreements?
Yes. The main difference with the current situation in the Netherlands is that exclusive licensees have the authority to start proceedings at the UPC for European patents which are not opted-out (and for unitary patents). This is currently not the case under Dutch law, unless the licence agreement makes specific provisions to that effect. We recommend that you consider this when entering into licence agreements.

12. Do I have to notify my licence holders about any opt-outs?
An opt-out (and opt-in) will have an effect on an exclusive licensee’s position, so they should certainly be informed. Even though nothing is changing for non-exclusive licensees, it is recommended that they should also be notified about any opt-out (or opt-in).

See also the webpage Unitary patent
See also the webpage Unitary patent and consequences for licence agreements