There will be no official fee to opt-out or opt-in.
For patent proprietors it will be easier to enforce a European patent, because this can be achieved in all UPC countries through a single court case. A UPC judgment will directly affect the patent in all UPC countries. Depending on your situation, this may be advantageous or detrimental compared to the former system wherein national courts decided on patent matters.
During a transition period until 1 May 2030, you may choose the (continued) applicability of the current national court system for your European patent(s). In that case, you must submit a so-called opt-out request with the UPC for those patents that are to be excluded from the court’s jurisdiction. In that case nothing will change and court cases will be handled only by the national courts.
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.
In most contracting member states there is a branch office of the UPC in the form of at least one Local Division. There are local divisions in Vienna, Brussels, Copenhagen, Helsinki, Paris, Düsseldorf, Hamburg, Mannheim, Munich, Milan, Lisbon, Ljubljana and The Hague.
In Stockholm, there is a Regional Scandinavian-Baltic Division. This Division will handle cases from Sweden, Estonia, Latvia and Lithuania. In addition, each of those countries designates institutions for hearings in their own country.
Paris, Munich and Milan are the three locations of the Central Division. A Court of Appeal is located in Luxembourg.
The UPC will work with short deadlines, and all evidence must be submitted at the earliest possible opportunity (front-loaded system). Therefore, business strategies require thorough freedom-to-operate analyses in view of the UPC.
Clearly, the UPC and national courts have markedly different procedural rules particularly relevant to the speed of the proceedings, and their decisions have different territorial scopes.
Depending on the legal question, the Courts of First Instance and the Court of Appeal of the UPC will apply
- European Union law (the “Unitary Patent Regulation” Regulation (EU) No. 1257/2012, and the "Translation Regulation" Regulation (EU) No. 1260/2012);
- the Agreement on the Unified Patent Court (UPCA);
- the European Patent Convention (EPC);
- other international agreements applicable to patents and binding on all the Contracting Member States (e.g. TRIPs).
National law only plays a minor role in UPC proceedings.
In infringement cases relating to European or unitary patents, the UPC will apply the articles regarding direct infringement (article 25), indirect infringement (article 26), limitations of the effect of a patent (article 27), and exhaustion of rights (article 29) of the UPCA. It is expected that role of the Court of Appeal will be important to clearly define infringement tests for equivalence or indirect infringement to ensure harmonization between UPC member states.
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.
The validity of a patent is resolved by applying the provisions of the EPC. Patentable inventions, novelty, inventive step and industrial applicability are interpreted in accordance with the EPC. In this respect, not much will change with current practice.
The UPC will apply national law to questions of property, such as security rights, contractual licensing, insolvency proceedings, etc., and questions of prior use and compulsory licenses.