As of 1 June 2023, two new parts of the European patent system came into effect: the unitary patent and the and Unified Patent Court (UPC). The unitary patent provides a simpler way to validate patents. The UPC provides a faster and more effective litigation process for patent infringement.
On this page you will read about what exactly the unitary patent and UPC entail and the effect that the new system will have on daily practice. The video below explains all this in 3 minutes.
The unitary patent
The unitary patent is an alternative to the existing validation process of a European patent in individual countries. Thus, it is not a “new” patent, but an option for a granted European patent to be effective in all 17 participating countries* at once. There is no change to the process of applying for and granting European patents.
What will the unitary patent mean for you?
After granting a European patent, for the 17 participating countries, you have a choice: register as a unitary patent, or validate in the individual countries.
If you choose registration as a unitary patent, the patent is immediately valid in all participating countries and the entire validation process is greatly simplified:
- Only one translation is required for registration, so no separate translations per country.
- The European Patent Office charges one annual fee for maintaining the unitary patent. So there are no more annual fees for individual countries.
- The unitary patent is automatically covered by the UPC, which centralizes litigation. Thus, an opt-out cannot be filed for a unitary patent.
If you sell your unitary patent, it covers all participating countries. So it is not possible to sell a unitary patent per individual country. However, licenses can be issued by country or region.
The Unified Patent Court (UPC)
Litigation on infringement and validity of European patents was always handled by the national courts of the respective country until 1 June 2023. With the advent of the new European Patent Court (the UPC), litigation for all participating countries will be centralized in this new European court. This applies to all new and existing European patents valid in one or more of the participating countries. However, patent holders can choose not to have their patents covered by the UPC with a so-called ‘opt-out’.
What will the UPC mean for patent holders?
With the advent of the UPC, enforcing a European patent becomes easier because it can be done with one procedure for all participating countries. A ruling directly affects patent positions in all participating countries. Depending on your situation, this can be advantageous or disadvantageous.
Independent action by exclusive licence holders
With the introduction of the UPC, something is changing for patents for which an exclusive license has been granted. Namely, the holder of an exclusive license will have the ability to take independent action against infringers at the UPC. Since this will apply to all existing European patents, it may therefore also affect your current license agreements. This may be reason for you to modify your license agreement or opt out.
Opt-out from the UPC
You can choose to have your European patent(s) excluded from the UPC. In that case, you file an opt-out for your European patent(s), so that litigation for the patent is handled only by the national courts of the 17 participating countries.
An opt-out can be filed both before and after the European patent is granted. For granted patents, an opt-out can be filed throughout the life of the European patent. An opt-out is also possible for European patent applications not yet granted, from the day of publication of the application by the European Patent Office. An opt-out is not possible for a unitary patent, and upon registration as a unitary patent, any previous opt-out from the patent application will lapse.
Opt-outs can be filed for a period of six years and eleven months from 1 June 2023, i.e. until 1 May 2030.
* Participating countries
The following 17 member states are participating in the unitary patent and UPC (status 1 June 2023):
Frequently asked questions
The European patent with unitary effect or, shortly, the unitary patent is an alternative to the existing process of validating a European patent in individual countries. It is therefore not a ‘new’ patent, but an option to extend the validity of a granted European patent across all UPC countries in a single stroke.
The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred in part. This also means that the unitary patent can only be enforced in a centralized court (the UPC). The UPC is also the only court where a holder of a unitary patent can start an infringement case. Within the opposition period (9 months from the grant of the European patent), third parties can request revocation of the unitary patent before the EPO. After the expiry of the opposition period, the UPC will also be the only court where revocation proceedings can be started against a unitary patent. A decision of the UPC will have effect for all UPC countries.
The European Commission considers patents a vital element of the Internal Market to achieve growth through innovation and increase the international competitiveness of European business. It considered that the efficiency, affordability and legal certainty of the patent system should be enhanced. Thereto, a pan-European patent protection and dispute settlement was to be created, based on two pillars: a European Union patent (the unitary patent) and a unified jurisdiction for patent disputes (the UPC).
The UPC and unitary patent system were established as of 1 June 2023.
The following UPC countries will participate in the new system when it starts:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Portugal, Slovenia and Sweden.
Countries that can participate in the UPC Agreement must be EU member states. The UPC and unitary patent system start with the 17 UPC countries listed above.
Several signatory states have not (yet) ratified the Agreement. These include Czechia, Ireland, Greece, Cyprus, Hungary, and Slovakia. These may still become UPC countries at a later stage.
Some EU member states (e.g. Spain, Poland) have not signed the UPC Agreement and are not participating.
Non-EU countries cannot participate, regardless of whether they are participating in the European Patent Convention (EPC) or not. These include the United Kingdom, Norway, Switzerland, and Turkey. Following Brexit, the UK is no longer an EU member state.
The courts will apply national law. However, national laws can be amended in view of harmonization with the UPC Agreement. In Germany and France, new rules on double patenting have come into force, allowing double patent protection for a national patent for the same invention alongside a unitary patent or a traditional European patent as long as the latter is not opted-out. This does not appear to open important new avenues, but goes to show that systems will exist side by side, with strong emphasis on harmonization. In Belgium, the limitations on the rights of patentees such as the research exemption and breeders’ exemption are brought in line with the UPC, so as to avoid different judicial regimes between patents that are opted-out or opted-in.
Although it is clear that the UPC and national courts have markedly different procedural rules particularly relevant to the speed of the proceedings, and that their decisions have different territorial scopes, there is less certainty about the applicable law when opting out. Moreover, there are various views among experts on whether an opt-out from the UPC’s competence also means an opt-out from the entire UPCA law.
Opting-out is removing a European patent from the jurisdiction of the UPC. It means that the current system whereby only national courts have jurisdiction is maintained and that the UPC has no competence to hear cases on the opted-out European patent. If you decide that legal disputes on infringement and validity of your European patent(s) should be heard by national courts instead of the UPC, you must submit an opt-out request for your current European patent(s). Opting-out a unitary patent is not possible.
In order to opt-out your European patent from the jurisdiction of the UPC, you must file an opt-out request with the UPC. The opt-out request can only be made on behalf of all proprietors. Your UPC representative may file such a request for you. In that case, only national courts have jurisdiction.
The requests for opting out have to be made for each European patent individually. So you can choose to have some of your European patent rights opted-out from the UPC and others falling under UPC jurisdiction.
The possibility for filing an opt-out also exists for pending European patent applications, from the time of publication of the application by the European Patent Office.
For new patent applications (applications still in their priority year or applications that have yet to be filed) you could consider filing national applications in the European countries of interest instead of filing a European patent application. Whether this is interesting from a cost perspective or a legal perspective, will depend on the situation.
There will be no official fee to opt-out or opt-in.
An opt-out can be filed both before and after the grant of a European patent. This can be done until 1 May 2030. This period can be extended by member states.
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