Preparing for change

What is the Unified Patent Court?

The UPC is a new common patents court with exclusive jurisdiction in respect of litigation (validity and infringement) for all EP(UPs) and non-exclusive jurisdiction over EPs validated in R-MS.

Currently, when granted by the European Patent Office, a European patent (EP) becomes a bundle of national rights that are validated and maintained in countries of commercial importance to your business.

When the UPC goes live, it will have jurisdiction over all existing European patents (and related SPCs) in the R-MS. The UPC will be competent to hear:

  • Infringement & related defences and licences
  • Declarations of non-infringement
  • Protective Measures / Injunctions
  • Damages
  • Revocation and counterclaims for revocation
  • Compensation for licence of right

This means that the UPC can grant powerful pan-UPC injunctions, but equally can revoke the patents centrally across the R-MS and grant pan-UPC declarations of non-infringement. The UPC Rules envisage a judgment on the merits being provided within 1 year of a claim being issued.

This is a significant change to the current system, where enforcement and revocation of each of the national designations of the EP are litigated separately in the national patent courts.

The UPC is a supranational court (see below) made up of a network of local, regional and central patents divisions that will be located across the R-MS territories. The Court will have a new set of rules and procedures that take features and tools of the existing EPC national patents courts. Most courts have indicated that English will be one of the possible languages and central division will use the language of the patent.

The UPC Central Divisions (currently Paris and Munich) will deal with revocation and declarations of non-infringement proceedings. Local/regional courts will deal with infringement, including preliminary injunctions. Arbitration will also be available within the UPC. The Court of Appeal will be in Luxembourg and the courts will be able to make referrals to the Court of Justice of the European Union.

The procedure will be front-loaded and there will be emphasis on written rather than oral advocacy. Injunctions, seizures, disclosure, expert evidence and cross-examination can be ordered by the Court. Potential infringers can lodge protective letters. There will be short interim hearings leading up to 1-2 day trials and a decision within 6 weeks of a final hearing.

There will be costs shifting, with the loser paying the winning party’s costs but recovery of costs will be capped relative to the value of the claim.

All EPs, including EP(UPs), will remain subject to the same 9-month, post-grant opposition procedures. The existing EPO opposition rules continue to apply. Ongoing oppositions will have no effect on an opt-out from the UPC. It is expected that opposition proceedings will run in parallel with UPC proceedings but the UPC does have discretion to stay proceedings where a rapid decision is expected from the EPO.

The Unitary Patent

Pros and cons of opting-out?

Deciding on European patent opt-out varies for each company. Industries differ in their approaches based on litigiousness, risk appetite, and investment in establishing ownership.

What is a UP?

The prosecution of European Patents will continue as before. At grant a European Patent (“EP”) will create a bundle of national rights but a new UP “designation” will become available.

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 the second half of 2022.

How do I opt-out of the UPC?

When the UPC comes into force, all existing and future European patents that are granted and validated in R-MS territories will become subject to the jurisdiction of the court.

Latest updates

First order to preserve evidence in the Paris Local Division of the UPC secured

HGF Partners Rachel Fetches, Richard Jenkins and IP Solicitor Christie Batty and its valued co-counsel Schertenleib Avocats Denis Schertenleib and Marc Lauzeral are pleased to have secured the first order …

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UPC and Forum Shopping – Rule 17.3

Order of the classifications listed on the front of a patent and why it matters? On 1 June 2023, ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE lodged a statement of revocation of …

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Event - 5th, 7th, 21st September 2023

Second Seminar in Salzburg, Dresden and Hamburg

HGF is organising a German-speaking seminar series in Salzburg, Dresden, and Hamburg. Dates September 5, 2023 at 17:30 – Dresden September 7, 2023 at 17:30 – Hamburg – CANCELLED September …

Event details

The UPC has opened its doors! See the latest updates and advice on the UPC here.

The European patent system has had the biggest change in a generation – on 1 June 2023 the Unified Patent Court (UPC) and a new “unitary patent” or “European patent …

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A new dawn for European patents and patent litigation - 1 June 2023

Just as the UPC’s sunrise phase has ended, a new dawn is breaking for European patents and patent litigation.  After many years of anticipation, the Unified Patent Court (UPC) and …

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EU Draft legislation on SPCs released

On 27 April 2023 the EU published 4 draft proposals regarding SPCs. Two of these proposals are completely new and propose the creation of Unitary SPCs: COM(2023)222 for medicinal product …

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Milan confirmed as third seat of Central Division

The Italian Foreign Office has published a press release announcing an agreement with France and Germany to set up a branch of the Central Division in Milan.  This agreement will …

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Applications to opt-out pass the 100,000 mark

There is now less than three weeks to go until the UPC opens its doors on 1 June 2023.  On the 9th of May the UPC has passed the 100,000 …

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