The Unitary Patent and the Unified Patent Court: what you need to know
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The forthcoming Unitary Patent (UP) and the Unified Patent Court (UPC) is the biggest shake-up of the European patent system since the 1970s. It will provide a new system for granting and litigating patents in Europe when it comes into force, which is expected in late 2022 or early 2023.
Our guide explains what you need to know about the UP and UPC and what owners of European patents need to consider before the new system comes into effect.
Unitary Patent
What is the Unitary Patent?
The Unitary Patent (UP) will supplement the existing European Patents (EPs). A Unitary Patent is a European patent with unitary effect. Procedures for the filing and prosecution of European patents will remain the same. Upon grant, proprietors will have the choice whether to validate their European patent in selected EU contracting member states and obtain a bundle of national rights, or elect for a Unitary Patent, effective in all participating member states who are signatories to the UP Agreement.
Which countries will the Unitary Patent apply?
The Unitary Patent will provide a pan-European right effective in 24 EU Member States. The UP will not apply to the United Kingdom, so holders of European patents seeking protection in the UK will need to validate their EP in the UK upon grant.
Benefits of the Unitary Patent
The Unitary Patent system is designed to reduce complexity and costs. There are a number of benefits for proprietors in requesting a UP, opposed to an EP validated in multiple states:
- Translations
Unlike the current European patent procedure where translations are required for national validation of European patents in EU member states, translation of the patent specification into only one other language of European Union is required.
- Official fees
There is no official fee for requesting unitary effect.
- Renewals
A single renewal fee is payable to the European Patent Office. Renewal fees correspond to the combined renewal fees due in the United Kingdom, Germany, France and Netherlands. A UP should cost less than a EP validated and maintain in four of the 24 EU member states.
- Enforcement
Patents can be revoked across the whole of Europe, rather than having to litigate in national courts (and associated cost savings).
When will the Unitary Patent and Unified Patent Court begin?
We are currently in the final countdown phase to the start of the UPC and UP, known as the Provisional Application Period (PAP). The PAP was triggered in January 2022 when Austria became the thirteenth EU member state to deposit its ratification of the UPC Agreement.
During the PAP, final preparatory work in establishing the court is underway. This is expected to take at least eight months. Once the court is ready, Germany will deposit its instrument of ratification of the UPC Agreement. The UP and UPC will start from the date of entry into force of the UPC Agreement. This will be on the first day of the fourth month after Germany’s deposit.
Based on these timescales, estimates suggest the UPC and UP will be operational in late 2022 or early 2023.
Unified Patent Court
What is the Unified Patent Court?
The Unified Patent Court (UPC) is a single patent court covering 24 countries, all of whom are European Union Member States who have ratified the UPC Agreement.
The UPC will have jurisdiction over the following patent rights:
- European patents and Supplementary Protection Certificates (SPCs) based on (unless opted-out)
- European patents with unitary effect (unitary patents) and SPCs based on unitary patents
Where will the UPC be located?
The UPC will consist of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will have a central division, located in Paris and Munich, and local and regional divisions. The central divisions are divided by subject matter, with court location determined by the patent technology area.
Any Contracting EU Member State may set up a local division, or together with other states set up a regional division. The Court of Appeal and the Registry, which handles administration of the court, will be based in Luxembourg.
Opting out of the UPC – the “transition period” and “sunrise period”
The key consideration for applicants and holders of European patents and SPCs is whether to opt out their patents and SPCs from the jurisdiction of the UPC.
There will be a “transition period” during which applicants or holders of European patents applied for or granted prior to the end of the transitional period have the option to opt out of the UPC, provided an action has not already been brought before the UPC. The transitional period is seven years, but this may be extended by another seven years. After the end of the transition period, it will no longer be possible to opt out patents from the UPC.
A key milestone for opting-out patents from the UPC is the “sunrise period”, which will begin three months from the start date of the UPC. This is designed for patent holders and applicants to take action to opt out their patents before the UPC goes live.
Once a patent has been opted out of the UPC it is possible to opt back in, however a second opt-out is not permitted. The opt-out will remain in force for the lifetime of the patent.
The opt-out concerns the European patent and all national patents derived from it, validated in contracting member states.
Where a patent has been opted-out, the opt-out automatically extends to an SPC based on the opted-out patent. Where the patent has expired, the expired patent can be opted-out and this will automatically extend to the SPC based on the opted-out expired patent.
Where there are multiple applicants or patent holders, all parties will have to act in common to exercise the opt-out. For SPCs, where there has been an assignment so that the holder of the SPC is different from the patent holder, both the SPC holder and the patent holder must actin in common to exercise the opt-out.
It is important to note that unitary patents and SPCs based on unitary patents cannot be opted out of the UPC.
Considerations for holders of European patents and applicants for European patents
The key consideration for holders and applicants is whether to opt out from the UPC. Now is the time to review existing patent portfolios and pending applications and make that decision. Once the “sunrise period” begins we anticipate demand will be high among clients wishing to opt-out their patents and patent applications from the UPC before it goes live.
Please contact your usual Forresters attorney or Jack Gunning for advice in relation to the UP and UPC.
