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A new unitary patent and unified patent court

Preparing for change

The Unified Patent Court (UPC) and a new “unitary patent” or “European patent with unitary effect” (UP) are likely to become a reality in June 2023.

The UPC and UP were created through the Agreement on a Unified Patent Court (UPCA), which has now been ratified by 17 EU Member States (R-MS), including Germany who will wait to deposit its instrument of ratification until the UPC is ready to go-live.

The UPC and UP do not cover non-EU European Patent Convention (EPC) countries (e.g., UK, Switzerland, Turkey, Iceland and Norway) and a number of EU MS are not participating (e.g., Spain, Poland and Croatia). Some EU MS are participating but have not started their ratification processes yet (e.g., Ireland).

How do the EPC and UPC interact?

To ensure that patentees obtain patent coverage that meets the business’ needs both geographically and economically, it is important to understand how the European Patent (38 EPC countries plus extension states) and the Unitary Patent (only available to EU members) will interact.

Quick facts & FAQs

Quick facts and frequently asked questions about the UP & UPC.

What is the UPC?

The Unified Patent Court or UPC, is a new patents court for all EU Member States that have ratified the UPC Agreement (R-MS). The aim of the UPC is to provide a harmonised system of patent litigation across all R-MS. The UPC will have exclusive jurisdiction for patent litigation (validity and infringement) relating to the new Unitary Patent. For a transitional period, the UPC will have non-exclusive jurisdiction for all granted and future EPs that are validated in R-MS and not opted-out. Litigants will be able to bring a single action against patents subject to the UPC’s jurisdiction and obtain a judgment that is binding across all R-MS. See above for more information.

What is a Unitary Patent?

A Unitary Patent or UP is a new multi-territory designation that will be available on launch of the UPC. Requesting a UP will create a patent with unitary effect across all of the EU Member States that have ratified the UPC Agreement at the date of grant (and will be fixed for the life of the patent). At present at UP will cover 17 EU MS, including Germany, France, Italy and The Netherlands but if more countries ratify the UPC Agreement, this could rise to 24 EU MS. Irrespective of the number of EU territories covered by the UP, there will be a single renewal fee, payable to the EPO. UP will be subject to the exclusive jurisdiction of the UPC. See above for more information.

How do I get a UP?

To be eligible for UP request, the EP application must grant with the same set of claims for all the R-MS. All 25 EU MS who agreed to enhanced cooperation for unitary patent protection must be designated. The request for unitary effect and required translation must be made within one month of grant of the EP. The one-month deadline is non-extendable. Refusals of a request by the EPO for grant of a UP can be appealed to the UPC.

How much does a UP cost?

The renewal fees have been set as equivalent to the renewal fees of the 'Top 4' states in which EPs were validated in 2015.

For patentees who validate widely across EU MS, this could represent a significant saving. This needs to be balanced against no ability to taper and reduce renewal fees at a later date. Further, the requirement for a full translation of the specification must be included in the cost calculation.

What are the language requirements for requesting a UP?

Applicants must provide a full translation in English of the patent, if prosecuted in German or French. If prosecuted in English, then applicants must provide a full translation in the official language any EU Member State. If issuing legal proceedings, Defendants can ask for full translation to Defendant's language.

How much will it cost to litigate in the UPC?

Litigation in the UPC should cost less than litigating a patent across a number of national courts. The Court fees for infringement proceedings and Preliminary Injunctions have been set at €11k plus a value-based cost (€2.5 - €325k). Revocation actions fees have been set at €20k. There will also be a value-based cap on recoverable costs up to €1.5m for an action worth > €50m.

Who are the UPC judges?

Many of the existing and some retired patent judges from the R-MS will sit on the UPC legal panels alongside technical judges (these could be patent attorneys, or lawyers or other experts) and new judges are being trained.

Can I opt-out of the UPC?

Yes, because the UPC represents a significant change in the patent landscape for Europe, there will be a transitional period of at least 7 years (likely to be extended to 14 years) where patentees can apply to opt-out. The application to opt-out must be made in respect of all the states for which the European patent has been granted or which have been designated in the application. Once opted out, the EP will stay opted-out for the life of the patent. The opt-out status for EPs will be searchable on an Opt-Out Register and shown on the EPO Patent Register.

A three-month Sunrise Period to apply for an opt-out will be available ahead of launch of the UPC. See above for more information.

Ultimately, after the transitional period, only EPs in non-UPC countries and patents validated through the national patent offices in R-MS will be outside the UPC's jurisdiction.

Who can opt-out?

In the case of published European patent applications, only the person(s) entitled to be the applicant(s) of the European patent application can opt-out the application, whether or not such person is recorded as such in the European patent register.

In the case of granted European patents, only the person(s) entitled to be registered as proprietor(s) under the law of each Contracting Member State in which the EP has been validated can opt-out the patent, whether or not such person is recorded as such in the national patent register.
There is a rebuttable presumption, however, that the applicant(s) shown on the European patent register or proprietor(s) shown on the national patent registers are entitled to be registered as such.

All of the applicant(s) or proprietor(s) entitled to be recorded as such must agree to file the opt-out.

When can I opt-out?

The option to opt-out European patents, patent applications and corresponding supplementary protection certificates from the jurisdiction of the UPC will be available from three-months before the UPC comes into force (the Opt-Out Sunrise Period) and for at least another 7-years during the transitional period.

We are expecting a significant volume of applications to opt-out during the Sunrise Period. If it is important for the business to ensure that the European patent is not subject to the UPC’s jurisdiction, we recommend that you provide your instructions well in advance of the UPC coming into force.

There is no requirement to apply to opt-out your European patents or patent applications during the Sunrise Period. Provided that proceedings have not been initiated before the UPC, then the proprietor(s) or applicants can apply to opt-out European patents or patent applications respectively up to one-month before the end of the transitional period.

Will the opt-out be publicly available?

Yes, it is intended that the UPC’s Opt-Out Register will be searchable.
The UPC Registry will also share data with the EPO and the EPO Register will also show if a European patent or patent application has been opted out.

How can opt-outs be challenged before the UPC?

One of the primary reasons for exercising an opt-out for a European patent, is to avoid an action for a central revocation before the UPC. If a third party considers it likely that an opt-out has not been exercised validly, then it may initiate central revocation proceedings before the UPC’s Central Division.

Patentees have a very short time (less than three months) to put in their defence to a revocation action. They also have one-month to file a preliminary objection against a revocation action being filed. One of the reasons for raising a preliminary objection is that an opt-out was validly made by all person(s) entitled to be the proprietor. The preliminary objection proceedings would have to be supported by detailed submissions and evidence demonstrating that the person(s) entitled to be the proprietor(s) applied to opt-out. If the supporting documentation and analysis of chain of title has not been done during the process of deciding to opt-out the EP, there will be significant time and costs pressure on the business and/or legal team to do this exercise quickly but thoroughly.

If the UPC’s Central Division holds that the opt-out was not validly executed and proceedings are ongoing before the UPC, it is not possible to rectify the error(s) to effect a new opt-out. The revocation proceedings before the UPC will continue through to resolution for the European patents valid and in force in participating EU Member States.

Can I withdraw my opt-out?

Yes, provided that there has been no litigation in the national courts of participating EU Member States, the opt-out can be withdrawn at any point during the lifetime of the patent. The application to withdraw the opt-out will be ineffective in respect of the patent in question, irrespective of whether the national proceedings are pending or concluded.

In the case of European patent applications that have been opted-out, the opt-out will be deemed withdrawn if a UP is designated on grant.

Can HGF assist me with navigating my way through the UP and UPC systems?

Yes, our European patent and patent litigation teams means we can continue to provide strategic advice on prosecution, litigation and licensing on all aspects of the UPC and UP.

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Event - 10th November 2022

Webinar: basics and news about Unified Patent Court

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