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’s CFI (Milan) extends deadline to file defence to infringement claim to align with parallel EPO appeal proceedings

Dainese S.p.A. v. Alpinestars S.p.A. & ors. UPC_CFI_472/2024 – Milan Local Division (Perrotti, Zana, Klein, Ashley) – 15 January 2025 The Milan Local Division granted a defendant’s request for an …

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UPC on Doctrine of Equivalents

Plant-e Knowledge BV & anor v Arkyne Technologies SL UPC_CFI_239/2023 (Brinkman, Granata, Walker & Koke) – 22 November 2024 The Hague Local Division has handed down the first substantive UPC …

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UPC stakes claim for wide-reaching long-arm jurisdiction for European patents

Fujifilm Corporation v Kodak GmbH & ors – Thomas J, Dr Thom J and Dr Parchmann J.  – UPC_CFI_355/2023 –  28 January 2025 The Düsseldorf Local Division has delivered the …

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UPC Court of Appeal clarifies approach for interpreting claims with “obvious” errors

Alexion Pharmaceuticals, Inc. v Samsung Bioepis NL B.V. [UPC_CoA_402/2024] –Court of Appeal of the UPC (Grabinski, Blok, Gougé, Enderlin, Hedberg) – 20 December 2024 Alexion Pharmaceuticals, Inc. v Amgen Technology …

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With the EPO and UPC adopting different frameworks for inventive step, is there potential for conflicting decisions?

The EPO regularly applies the problem and solution approach when deciding whether an invention involves an inventive step.  Central to this approach is identifying the technical differences between the invention …

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Paris Central Division of the UPC has provided guidance on what constitutes common general knowledge (“CGK”)

Netherlands B.V. v VMR Products LLC [UPC_CFI_307/2023] –Paris Central Division (Catalozzi, Zhilova, Tillmann) – 29 November 2024 The Paris Central Division of the UPC has provided guidance on what constitutes …

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UPC Court of Appeal Remits Meril’s request to stay infringement proceedings pending the outcome of EPO opposition

Meril Life Sciences PVT Limited & ors v Edwards Lifesciences Corporation [UPC-CoA-551/2024] –Court of Appeal of the UPC (Grabinski, Blok, Gougé) – 21 November 2024 The UPC’s First Panel of …

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Central Division takes pragmatic approach to late-filed submissions and revokes VMR’s patent for lack of inventive step

In Njoy v VMR (UPC_CFI_308/2023), the Paris Central Division confirmed that the “front loaded” provisions of the UPC should be interpreted in line with the principles of proportionality and procedural …

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