Unitary Patents & The Unified Patent Court

A UP is a single patent right that provides protection in all participating EU Member States that have signed the UPCA at the time of the UP’s registration. UPs will be granted off the back of European patents granted by the EPO. There will be no change to the filing, search and examination phases for a European patent application.  Also, the opposition and appeals system at the EPO will remain unchanged.

The UP may be obtained from either a European patent application filed on Regional Phase entry from a PCT application or as an original application filed at the EPO. Within one month of grant of the European patent, the patent proprietor will be able to request “unitary effect”, thereby getting a Unitary Patent.

The essential criteria of UP are that the Patent as granted designates all 25 participating Member States (regardless of whether or not a state has ratified the UPCA) and that the Patent has the same set of claims for all participating Member States.

Under the system of national validations, when a European Patent (EP) is granted it is necessary to validate the patent in each country where patent protection is required and then pay annual renewal fees in that country. In contrast, the UP does away with the validation requirement for taking a EP into certain countries, thereby potentially reducing costs and administrative effort.

A UP provides a number of advantages. For example, the proprietor of a UP can seek remedies for infringement of a UP centrally at the Unified Patent Court (UPC) for all states that are signatories to the UPCA at the time the UP was registered. It is likely that this will be significantly cheaper and faster than litigating an EP bundle of national patents separately in each validated state. However, this is balanced by the risk of central revocation of a UP by a third party, which would be effective in all states signatory to the UPCA at the time the UP was registered.

Additionally, depending on the number of countries in which validation of an EP would have been sought, a UP may have lower administrative costs and almost certainly lower renewal costs in comparison to validating an EP. Generally, if protection is wanted in more than four countries that are signatories to the UPCA, then selecting a UP will be more cost effective than the EP validation approach. The registration and renewal fee payments for a UP are undoubtedly simpler than under the traditional EP validation regime. Where previously separate renewal fee payments would have to be made for each EP validation via a local attorney, a single annual UP renewal fee can be paid directly to the EPO in Euros.

There is no fee for applying for a UP, but for a transitional period of at least 6 years a complete translation of the specification must to be submitted when applying for the UP. There are provisions for compensating certain parties a proportion of the cost of providing this translation and we can look into this on a case-by-case basis. The translation requirement will result in the specification being available in English and one other official EU language.

For more information on the cost of Unitary Patents, click here.

A Unitary Patent provides protection in all participating EU Member States that have ratified the UPC Agreement at the time of the UP’s registration. This will likely mean that the country coverage provided by a UP will increase over time as more participating Member States have ratify the UPCA. To date, there are 18 of the 38 countries party to the European Patent Convention (EPC) that have ratified the UPCA. For a full list of the member states that have ratified the agreement, click here.

When deciding whether to apply for a UP, it is important to consider that there are a number of countries which will not be covered by a UP, and for which separate validation must be sought if patent protection is required. Countries designatable for an EP patent that are not covered by a UP include non-EU countries such as the United Kingdom, Norway, Turkey, and Switzerland, and non-signatory countries to the UPCA such as Spain, Poland, and Croatia.  An EP will need to be taken into these countries using the usual validation procedures if patent protection is required there.

First, a European patent must be obtained from the EPO. The patent can stem from either a direct-filed European patent application, or the European regional phase of a PCT.

Once the European patent has been granted, a “request for unitary effect” must be filed at the EPO. This request must be filed within 1 month of the date of publication of the mention of grant of the European patent in the European Patent Bulletin.

If the European patent was prosecuted in English, then a translation of the specification into another language of the EU must be filed within the 1 month deadline for requesting unitary effect. If the European patent was prosecuted in another language, then a translation of the full specification into English must be filed within this deadline.

There is no registration fee for requesting unitary effect, but annual renewal fees must be paid to the EPO to keep the Unitary Patent in force.

To be eligible for registration as a Unitary Patent, the granted European patent must have the same set of claims in respect of all of the participating member states of the UPCA.

The EPO opposition and appeals system continues to run unchanged in parallel with the UP/UPC system.

An EPO opposition provides the opportunity for third-parties to centrally challenge the validity of a granted EP patent in all designated states. However, an opposition must be filed by the third-party at EPO within a 9 month window post-grant.

The UPC regime will allow third-parties to centrally challenge the validity of a non-opted-out EP patent, or a UP, in all EU member states that are signatories to the UPCA throughout the patent’s term.

Accordingly, unless opted-out, EPO oppositions and the UPC can provide two opportunities for third-parties to attempt to “centrally” invalidate a patent. Indeed, both proceedings may be run in parallel.

The Unified Patent Court (UPC) is a court that can hear actions on UPs and traditional European Patents that have not been opted-out of its jurisdiction. The UPC can hear actions for, inter alia, infringement or revocation of both Unitary Patents and traditional European patents.

During a transition period of 7 years from the opening of the UPC, it is possible for European patents designated for EU Member States that have ratified the UPC agreement to be litigated in either the UPC or in the national courts. However, following the transition period (which might be extended for a further 7 years), the UPC will have exclusive jurisdiction over UPs and EP patents granted by the EPO unless they are opted-out of the jurisdiction of the UPC. This will include EP patents granted from patent applications that were filed prior to the end of the transition period.

Yes, provided that no action concerning the European patent, dependent SPC, or European patent application has been brought in the UPC. However, UPs cannot be opted out.

Throughout the 7 year transition period from the opening of the UPC, (and provided that no action concerning the European patent, dependent SPC, or European patent application has been brought in the UPC) it is possible to opt-out of UPC jurisdiction granted European patents (both those in force and those that have expired), pending European applications and SPCs. For opted-out European patents having corresponding SPCs, the SPC must be opted-out when the parent European patent is opted-out (and vice versa), even if the SPC has a different owner to the European patent. Opting-out will have the effect of the UPC not having jurisdiction over the opted-out IP. Therefore, cases of infringement and validity will have to be brought before the national courts, thereby removing the risk of central revocation by the UPC.

Provided an opted-out European patent has not already been litigated before a national court, the opt-out may be withdrawn by the proprietor at any point during or after the transition period, e.g. to allow a central infringement action to be brought. This may enable the proprietor to avoid the risk of central revocation until they are ready to litigate, and then to enjoy the benefits of reduced costs and increased speed of a central infringement action before the UPC.

If proceedings are initiated in either the UPC or a national court, this “pins” the patent within or outside of the UPC jurisdiction at which point opt-out (or withdrawal of opt-out) is no longer available.

If you intend to opt-out your IP, we strongly recommend doing so at the earliest possible opportunity, to reduce the likelihood of being “pinned” within the jurisdiction of the UPC by a third party.

The opt-out must be applied for via the UPC Case Management System, and must be performed by an individual authorised to act before the UPC or by a European Patent Attorney. We have several attorneys who are registered representatives before the UPC, and therefore can provide complete assistance with this process.  There is no official fee for opting-out or for withdrawing an opt-out, but we apply a docket fee per case for completing this action.

The application to opt-out may only be done on behalf of the actual proprietor(s) of the European Patent or application or SPC.  The application to opt-out must be instructed by, and include accurate details of, the actual proprietor/applicant of the European patent/application, even if these details differ from what is recited on the EP or national patent registers. Where the patent or application is owned by two or more proprietors (including where there are different proprietors in different designated states), the application to opt-out must be instructed by all proprietors.

It is of the utmost importance that opt-out application is correct in case the validity of the opt-out is ever challenged, as an opt-out instructed by the incorrect proprietor will be deemed invalid and the patent/application/SPC will be pinned within the jurisdiction of the UPC.

According to Art.32(1) UPCA, the UPC will have competence to hear cases regarding:

(a) actions for actual or threatened infringements of UPs/EPs and SPCs and related defences, including counterclaims concerning licences;

(b) actions for declarations of non-infringement of UPs/EPs and SPCs;

(c) actions for provisional and protective measures and injunctions;

(d) actions for revocation of UPs/EPs and for declaration of invalidity of SPCs;

(e) counterclaims for revocation of UPs/EPs and for declaration of invalidity of SPCs;

(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;

(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;

(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and

(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.

The court fees of the UPC comprise a fixed fee, combined with a value-based fee when the value of the case is above the set ceiling of €500,000. The value-based fee will rise according to the value of a case. The fixed and value-based fee structures of the Court of First Instance are set out below. To view the “Rules on Court fees and recoverable costs” in their entirety, including the fees for the Court of Appeal, click here.

Fixed Fees (Court of First Instance)

Value Based Fees (Court of First Instance)