In 2012 the principle of a “unitary patent” or “European patent with unitary effect” (UP) was agreed. At that time, it was proposed that this would create a new type of a patent offering uniform protection within the territory of at least 13 of the 25 participating Member States of the European Union: Austria, Belgium, Bulgaria, Czech Republic, Cyprus, Germany, Denmark, Estonia, Greece, Finland, France, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden, UK*.
Applicants would not need to apply separately for a UP – any patent applied for, examined and granted by the EPO would have the possibility of benefiting from unitary protection at the request of the patentee.
A combination of a UP together with a classical EP in one or more EPC contracting states (such as Spain, Turkey, Norway) would be available, but no double protection at a UP and EP level would be possible.
In order to give full effect to the UP, there is additional legislation regarding language and the setup of a single and specialised European court with patent jurisdiction – the “Unified Patent Court” (UPC).
* In 2020, the UK decided not to participate in the UP and UPC so the final form and details of the UP and UPC are yet to be agreed.
HGF’s specialists can discuss a wide range of UPC topics:
Implementing UPC strategy
UPC’s impact on licences, ownership and SPCs
Quick facts and frequently asked questions about the UP & UPC.
A UP is a Unitary Patent; a new pan-EU patent right covering up to 25 Member States who have signed up to the UPC Agreement. (Currently all EU Member States except Spain, Croatia and Poland). The UK decided not to participate in 2020.
European Patents will be prosecuted as normal and a patentee must file a request for Unitary Patent Protection at the EPO no later than one month after the mention of grant of the patent is published. A combination of a UP together with a classical EP in one or more EPC contracting states (such as Spain, Turkey, Norway) will be possible.
The renewal fees have been set as equivalent to the renewal fees of the 'Top4' states in which EPs are currently validated. A significant saving if you are validating in more than 4 Member states.
If prosecuted in German or French, then applicants must provide full translation in English on grant. If prosecuted in English then applicants must provide a full translation in the official language any Member State. If issuing legal proceedings, Defendants can ask for full translation to Defendant's language.
The UPC is the Unified Patent Court; a new court with an entirely new set of rules that will have exclusive jurisdiction over UPs and (for at least 7 years, probably 14 years) non-exclusive jurisdiction over existing EPs. The central court will deal with revocation & DNI actions and local/regional courts will deal with infringement, including preliminary injunctions. (This is subject to rules on dealing with counterclaims, stays and transfers between the courts).
The central division is headquartered in Paris, with divisions in London (pharmaceuticals, chemistry and medical devices) and Munich (mechanical engineering) with Paris dealing with electronic and software cases. Germany has announced 4 local courts (Munich, Düsseldorf, Mannheim and Hamburg) and we expect a local court to be set up in the UK (London – having the same location as the central division), the Netherlands, Ireland, Belgium, Italy, France, Finland, Denmark and Austria. One Regional Court has been agreed between Sweden, Lithuania, Latvia and Estonia (Stockholm). Most courts have indicated that English will be one of the possible languages and central division will use the language of the patent. The Court of Appeal & registry will be in Luxembourg. *The UK has now decided not to participate in the UP and UPC so this location needs to be revisited.
It should cost less than litigating a patent across a number of national courts. Infringement proceedings and Preliminary Injunction will cost €11k + a value-based cost (€2.5 - €325k). Revocation actions, €20k. There will also be a value-based cap on recoverable costs up to €1.5m for an action worth > €50m.
We expect that all of the existing national patent judges will participate together with technical judges (these could be patent attorneys, or lawyers or other experts) and new judges are being trained.
Yes; in order to avoid the UPC holders of existing EPs can "opt-out" of the jurisdiction of the UPC at no charge. These EPs will be litigated in the national courts as before. The patentee can at a later date irrevocably opt back into the UPC system at no charge.
Alternatively patentees can just go 'national' and not through the EPO at all, thereby avoiding the UPC. There will be a sunrise provision to allow registration of the opt-out before the system goes live. UPs can’t be opted-out.
This will only apply for a transitional period of initially 7 years; but once opted out, the EP stays opted out for the life of the patent (unless opted back in).
The 'proprietor' of the patent – so there is a need to check all licences as to who owns the patent (including if jointly held) and does the exclusive licensee have any rights/interests in the opt-out?
Likely to be approximately 6 months after all the required ratifications of the Agreement on the UPC have been completed.
The UK government has confirmed it is not proceeding with preparations to participate. The future of the UPC is likely to look different without the UK, but could still go ahead.
The UP creates a powerful pan-EU right enforceable in a single Court action. For patentees who validate patents in more than 4 member states renewal fees (and associated validation/translation costs) will be reduced.
This was an area of concern during the negotiations about the UPC and remains a concern, if well-funded NPEs and Hedge Funds abuse the system. However, unsuccessful parties will have potential costs awards to consider as well as relatively high up-front fees to launch proceedings so the UPC will be less attractive than jurisdictions with lower court fees and/or the ability to recover costs.
Yes, our model of closely integrated and highly experienced teams of patent attorneys and solicitors means we can provide strategic advice on prosecution, litigation and licensing throughout the lifetime of the UP and UPC.
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