The Unitary Patent and
Unified Patent Court
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What is it?
The Unitary Patent (the full name for which is a “European Patent with
Unitary Effect“) will be a new single patent right covering the majority of
the EU Member States.
A new court system, the Unified Patent Court (or “UPC”), will have
exclusive jurisdiction over all matters relating to the validity and
enforcement of the Unitary Patent and, subject to transitional provisions,
will also deal with existing European Patents.
In contrast to the existing European Patent which operates as a bundle of
national patents in each of its designated jurisdictions, the Unitary Patent
will be one single right which will be enforceable across the whole of its
territory through one action in the UPC.
Similarly, a Unitary Patent may be invalidated as a whole by one single
challenge brought in the UPC.
The Unitary Patent is also to be transferred, licensed, renewed or
otherwise dealt with as a single right.
The Unitary Patent and UPC are not currently expected to come into effect
until at least early 2015.
Following the introduction of the Unitary Patent, there will be three
different systems of patent protection available in European countries:
(1) the Unitary Patent (2) European Patents, and (3) separate national
patents applied for and enforced locally.
The Unitary Patent and
Unified Patent Court
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Which countries are covered
The following 25 EU Member States have signed the Agreement for the
Unitary Patent: Austria, Belgium, Bulgaria, Cyprus, Czech Republic,
Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland,
Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal,
Romania, Slovakia, Slovenia, Sweden, United Kingdom. Spain and Italy
have indicated that they do not wish to take part and Croatia has not yet
signed since joining the EU in 2013. Further Member States may join
the system in the future if they sign both the Unitary Patent and Unified
Patent Court Agreements. The Agreements will not come into force until
it has been ratified by at least 13 countries, which must include the UK,
France and Germany. As at 12 June 2014, Austria, France, Sweden and
Belgium have ratified the Agreement. The UK and Denmark are taking
steps towards ratification.
Spain, Poland and Croatia have not yet signed the UPC Agreement.
Accepting the jurisdiction of the UPC is a prerequisite for the Unitary
Patent having effect in a country and therefore Poland would have to
sign and ratify the UPC Agreement before Unitary Patents could take
effect there. Italy*, although it has not signed up to the Unitary Patent, is
a member of the UPC Agreement, as a result of which the UPC will have
jurisdiction over Italian designations of European Patents.
Covered by Unitary Patent / UPC
Austria, Belgium, Bulgaria, Cyprus, Czech
Republic, Denmark, Estonia, Finland, France,
Germany, Greece, Hungary, Ireland, Latvia,
Lithuania, Luxembourg, Malta, Netherlands,
Portugal, Romania, Slovakia, Slovenia,
Sweden, United Kingdom
Not covered by Unitary Patent / UPC
Croatia, Italy*, Poland, Spain
Non-EU EPC territories
Albania, Switzerland, Iceland, Lichtenstein,
Monaco, FYR Macedonia, Norway, Serbia, San
covered by Unitary Patent / UPC
not covered by Unitary Patent / UPC
non-EU EPC territories
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How to apply
As with European Patents, the new Unitary Patent will be managed by the European Patent Office (“EPO”).
Applications are to be submitted to the EPO in the same way as for a European Patent. Within one month following the grant of the patent, an applicant will need to elect whether the patent is to have unitary effect. Otherwise, the patent will take effect as a European Patent in accordance with the existing system.
Applications may be submitted in either English, French or German. One further translation must be submitted if the applicant requests unitary effect. If the application is in English, a translation into one of the other 22 official EU languages is required. If the application is in French or German, a translation into English is required.
As with European Patents, opposition proceedings may be brought before the EPO within 9 months of the grant of the Unitary Patent (note not 9 months from the election for unitary effect).
Unified Patent Court
The Unified Patent Court (or “UPC”) is a new court system, which will have exclusive jurisdiction over all infringement and validity actions relating to the new Unitary Patent.
The UPC will have jurisdiction to grant injunctions covering the entire territory of the Unitary Patent. Likewise, the Unitary Patent may be invalidated as a whole by a challenge brought in one jurisdiction. Currently, European Patents may only be enforced or revoked through separate national court proceedings or revoked by the EPO following an opposition.
However, subject to certain transitional provisions (which are set out in further detail below), the UPC will also gain jurisdiction over European patents, in which case these too may be centrally revoked or enforced through a single action before the UPC.
The UPC will comprise both legally and specialist technically qualified judges.
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UPC structure and case allocation
The Court will comprise a Court of Appeal, based in Luxembourg, and
a Court of First Instance. The Court of First Instance will be split into a
Central Division and Local/Regional Divisions. The Central Division will
be composed of a main branch in Paris, with sub-branches in London and
Munich. The case-loads between the Central Division branches will be
split according to technical subject area (see table overleaf).
The local/regional branches will generally have jurisdiction over
infringement actions, brought in the jurisdiction where the infringing act
occurred or where the defendant is resident or has a place of business.
The Central Division will generally have jurisdiction over actions for
revocation or declarations of non-infringement (in the absence of an
existing infringement action), and infringement actions where the
defendant does not have an EU presence.
If revocation proceedings are brought as a counterclaim to infringement
proceedings in a local/regional division, there are three possible avenues:
1. The local/regional division will hear both the infringement action and
2. With the agreement of the parties, both the infringement action and
counterclaim for revocation will be transferred to the Central Division
3. The local/regional division will “birfucate”, which means that it will
refer the revocation counterclaim to the Central Division and retain the
infringement action, which it will either suspend or proceed to hear.
National court practice is likely to influence the extent to which the
local / regional divisions opt to separate out infringement actions and
counterclaims for revocation in this way.
Notwithstanding these rules, it will be open to the parties to agree a
division of their choice.
In March 2014, Sweden, Estonia,
Latvia, and Lithuania agreed
to establish the first regional
division of the Unified Patent
Court (“UPC”) – the Nordic-
Baltic regional division. The
seat of the regional division
will be Stockholm, Sweden,
though the intention is that
cases will be heard in multiple
locations to the greatest extent
possible. The language used
will be English.
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Court of Appeal - Luxembourg
Language adopted at first instance
Language of patent (with agreement of parties)
Other (in exceptional cases)
Court of First Instance
Language: Language of patent
All other subject matter
(IPC Class A)
(IPC Class C)
(IPC Class F)
Language: Official national language/designated regional language
– Actions for revocation/declaration of non-infringement (in absence of existing infringement action)
– Infringement actions where D does not have an EU presence.
– Infringement actions (including preliminary injunctions), where:
• D has EU presence, or
• where infringing act occurred.
– If counterclaim for revocation, 3 options:
1. Local/regional division retains infringement action and counterclaim
2. Both actions referred to central division (by agreement of parties)
3. Bifurcation: Local/regional division retains infringement act
Infringement action + revocation counterclaim
Revocation counterclaim referred to central division
The Unitary Patent will come into effect as the same time as the UPC Agreement enters into force, which will be once the UPC Agreement has been ratified by 13 of its 25 contracting states including UK, France and Germany. This is not currently expected to happen until at least early 2015. As at 12 June 2014, Austria, France, Sweden and Belgium have ratified the Agreement.
For an initial transitional period of between 7 years (extendable by up to a further 7 years) an action for infringement or revocation of a European Patent may still be brought before national courts or other competent national authorities (e.g. the UK IPO).
In addition, during the transitional period, unless any action has already been brought before the UPC, owners of existing European Patents or applicants for new European Patents applied for during the transitional period may formally opt out of the jurisdiction of the UPC. This will be subject to a fee per patent which has not yet been set. Patents which have been opted out may be opted back in to the jurisdiction of the UPC, unless an action has already been brought before a national court.
To opt out or not to opt out?
It is not yet clear what the overall effect of opting out of the UPC’s jurisdiction will be. There will be a sunrise period for patent owners to notify their opt out. Although the UPC system is unlikely to come into force until at least 2015/2016, given its wide implications patent owners will face an important decision as to whether to exercise their right to opt opt and therefore may wish to consider this in good time before the UPC system comes into effect.
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Unitary Patent compared to European Patent
• Single patent right potentially across 25 EU Member States, applied for and granted by EPO.
• Central renewal through EPO, single set of renewal fees.
• Less onerous translation requirements at application stage and in court proceedings.
• Bundle of national patent rights across up to 38 Contracting States, applied for and granted centrally by EPO.
• Separate national renewals, separate national renewal fees.
• More onerous, and therefore more costly, translation requirements.
The opt out only applies to European Patents, and not to Unitary Patents. After the transitional period has ended, the UPC will gain exclusive jurisdiction over both Unitary Patents and European Patents. However, any actions pending before national courts at the end of the transitional period will remain with the national court.
Areas for clarification
Many of the detailed rules around UPC procedure and the transitional provisions are yet to be finalised, so it is currently unknown exactly how the system will work in practice. In view of the transitional provisions, there is likely to be a “dual system” of enforcement both through the UPC and national courts until at least the 2020s.
The fees for the new Unified Patent have not been set. The level of fees will take into account the costs of obtaining a bundle of national rights through a European Patent This may mean in practice that a European Patent will still be the cheaper option where protection is only required across a small number of countries.
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