Unified Patent Court (UPC) and Unitary Patent

The Unitary Patent is a “European Patent with unitary effect”, i.e. a European Patent granted by the European Patent Office which, after grant, is given unitary effect for the territory of the participating member states at the request of the patent proprietor. In other words, the Unitary Patent is a “single patent granted for the participating member states” with a single court having jurisdiction over its effects.

The administrative preparatory phase for the establishment of the court has already started. According to the official timetable of the Preparatory Committee, the entry into force of the UPC Agreement is currently planned for 1 June 2023, with the Court opening its doors and starting to receive cases as from that date. Unitary Patents can be applied for on or after the date of entry into force of the UPC Agreement. However, European Patent Applications that are already pending can be redesignated as Unitary Patents. Existing European Patents will come under the jurisdiction of the UPC unless opted out.

Initially, as things stand today, there will be 17 member states, as some are yet to ratify the Unified Patent Court Treaty: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. It may potentially be extended to more EU member states. Following Brexit, the UK also withdrew from the Unified Patent Court Agreement.

The application procedure of a classic European Patent and a European Patent with unitary effect is identical. As soon as the grant of the European Patent has been published in the European Patent Bulletin, patent owners have one month to file a request for unitary effect with the European Patent Office. The deadline is not extendable.

All participating EU member states will join the newly established Unified Patent Court (UPC), which is a supranational court whose judgments have direct effect in all participating member states.

The UPC will be a single court with jurisdiction over all Unitary Patents and all “classic” European Patents – unless they are opted out. Its jurisdiction will cover validity and infringement of these patents in one procedure for all participating member states.

For an interim period, owners of “classic” European Patents and patent applications can choose to “opt-out” from the jurisdiction of the UPC.

Going forward, national courts will only have jurisdiction for national patents or for “classic” European Patents for which the owners have declared an “opt-out” from the UPC system (initially valid for 7 years).

As long as no national revocation action has been started in a participating member state, a patentee or applicant can also withdraw the “opt-out” with the effect that the European Patent or patent application is put back into the Unitary Patent Court system. Further information on opting out is found in the next section.

• All existing European Patents and patent applications will be affected by this change.

• Patent prosecution and enforcement strategies have to be adjusted. In particular, patent owners need to decide between national patents, “classic” European Patents or Unitary Patents.

• Patent owners have to decide whether to “opt-out” existing European Patents and applications from the Unitary Court system. For an interim period of seven years (which may be extended for further seven years) patent holders have the option to decide to “opt-out” their “classic” European Patents and applications from the jurisdiction of the UPC. The decision to opt out of the competence of the UPC will mean that the national courts continue to have jurisdiction.

• An ”opt-out” is not possible from the point that an action is pending in the Unitary Patent Court. To ensure that all patent owners can secure an opt-out for their European Patents, they have the option to declare an “opt-out” during a “sunrise” period, which is expected to start three months before the official start of the UPC.

Patent owners should determine their strategy now if they would like to declare an “opt-out” as this decision has significant consequences. While a decision before the UPC can be an effective and quick legal protection against infringers in multiple member states, there is, of course, a risk that a patent is lost in all participating member states with a revocation action. 

Training on the UPC – various content and length of training available.

Extensive review: Review of individual European Patent families (including applications) of entire patent portfolio and recommendation on how to proceed for every member with regard to questions of structure of patent portfolio and opt-out-decision.

High level review: High level review of patent portfolio and recommendation on how to proceed with regard to questions of structure of patent portfolio and opt-outdecision based on the example of 10/20/30 patent families.

Individual review: Review of individual European Patents, applications and patent families upon individual request and recommendation on how to proceed with regard to questions of structure of patent portfolio and opt-out-decision.

• Support and filing of opt-out declaration.
• Support and filing of opt-in declaration.

• Development of future validation strategy regarding Unitary Patents, European Patents and national patents.
• Regular review of the application strategy in Europe.
• Strategic advice on new individual patent applications with regard to validation strategy.

• Review of existing license agreements in light of the UPC.
• Drafting of license agreements or clauses in light of the UPC.

• Preparation of litigation strategies including the UPC proceedings.
• Representation in opposition and nullity proceedings with the assistance of patent attorneys (active/passive).
• Representation in infringement proceedings (active/passive).

Advice on technology transactions, in particular with regard to the UPC.