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.

Now the UPC is live, it has 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 has 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 can be used as one of the possible languages and central division will use the language of the patent.

The UPC Central Divisions (currently Paris and Munich) deal with revocation and declarations of non-infringement proceedings. Local/regional courts deal with infringement, including preliminary injunctions. Arbitration is also 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 is front-loaded and there is an 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 is costs shifting, with the loser paying the winning party’s costs but recovery of costs are capped relative to the value of the claim.

All EPs, including EP(UPs), 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. Opposition proceedings can 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

On 1 June 2023, The Unified Patent Court (UPC) and a new “unitary patent” or “European patent with unitary effect” (UP) became a reality.

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

UPC first FRAND judgment results in injunction against OPPO

Panasonic Holdings Corporation v Guangdong OPPO Mobile Telecommunications Corp. Ltd & anor UPC_CFI_210/2023 – Mannheim Local Division (Tochtermann, Böttcher, Brinkman & Loibner) – 22 November 2024. The UPC issued its …

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Edwards v Meril confirms UPC’s jurisdiction over acts of infringement before the court came into force

In Edwards v Meril (UPC_CGI_15/2023), the UPC’s Munich local division refused to stay infringement proceedings pending an appeal on the central division’s finding of validity of the patent in amended …

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Njoy v Juul finds the patent's underlying problem despite no mention of the problem in the specification

In Njoy v Juul (UPC CFI 315 /2023), the Paris Division of the Central Division provides further insight into the UPC’s approach to inventive step. Of critical importance in assessing …

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Success of the Gilette Defence fizzles out in SodaStream v Aarke

In SodaStream v Aarke (UPC_CFI_373/2023), the UPC’s Dusseldorf local division has given us further insight into the UPC’s approach to claim interpretation. The court held that, if the patent distinguishes …

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The Patent Lawyer: UPC’s first year: emergence of a purely civil law system?

The UPC passed its milestone 1 year anniversary on 1 June 2024. At the time of writing we are still awaiting the first substantive decisions on invalidity and infringement, there …

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UPC issues two first instance decisions on infringement

Last week, just over one year since it became operational, the UPC handed down its first major decision in an infringement action. Here, the UPC met one of its primary …

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Romania will become 18th country to participate in the UPC and UP - EPO announce possibility to delay the registration of unitary effect

From 1 September 2024 Romania will become the 18th country to participate in the UPC following ratification of the UPC Agreement. This means that any Unitary Patents registered on or …

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Opinion Piece: Unitary Patent and Unified Patent Court in Ireland

Intellectual Property (IP) is a core part of any business and particularly is a vital part of the strategic toolkit for any business that creates value through innovation and constant …

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