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Unitary Patent (UP) and Unified Patent Court (UPC)

Introduction

The Unitary Patent (UP) and the Unified Patent Court (UPC) aim at achieving a long-desired simplification and harmonization of post-grant patent proceedings in the EU area. Among others, they have reformed the post-grant national validation step of European patents and have provided a dedicated patent court to address infringement and validity disputes commonly for multiple EU member states.

Initially, the UP/UPC system operates concurrently with national validation and court systems concerning post-grant activities pertaining to European patents. After a transitional period, which extends at least until 2030, the UP/UPC system is anticipated to acquire exclusive jurisdiction over European patents within the participating countries.

Presently, 17 out of the 27 member states of the EU have joined the new UP/UPC system. For the remaining EU member states, as well as the 12 non-EU member states of the EPO, the old validation system and national court systems are still the only applicable systems. The UP/UPC system is relatively new, in force since mid-2023.

  • 17 Participating UP/UPC member states: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
  • 10 Non-participating EU member states: Cyprus, Croatia, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, Slovakia, and Spain.
  • 12 EPO contracting states outside the EU: Albania, Iceland, Liechtenstein, Macedonia, Montenegro, Monaco, Norway, San Marino, Serbia, Switzerland, Turkey, and the UK.

Utilization of the Unitary Patent and Unified Patent Court in the participating countries is open to all holders of European patents and patent applications regardless of their nationality or place of business.

The UP/UPC system introduces several new considerations when approaching grant of a European patent, for example deciding between UP and traditional validation, and whether or not to opt-out the patent from the jurisdiction of the UPC. Do not hesitate to contact us for input and inspiration before making your decisions.

Unitary Patent (UP)

A Unitary Patent (UP) is in fact simply a traditional European Patent, where the patentee has applied for Unitary Effect within one month after grant. Thereby the European Patent is filed, examined and granted by the traditional route by the EPO.

The Unitary Patent confers patent protection unitarily across the group of member states participating in the UP/UPC system at the time the unitary effect is registered. This means, the patent stands or falls together for that group of member states, with respect to validity, infringement and annuity fees. It is not possible to include or exclude countries from this group with respect to a specific European Patent. For achieving protection in the additional countries, traditional validation can be used for non-participating EU countries, as well as for EPO contracting states outside the EU. Instead of a Unitary Patent, traditional validation can be used for individual UP/UPC-participating countries when the unitary effect of the UP/UPC system is not desired.

Only the Unified Patent Court (UPC) has jurisdiction over validity and infringement of Unitary Patents (UP). All questions in such regards must therefore be taken to the UPC, and cannot be dealt with by the national courts. This also means that the opt-out option (see below) is not applicable to Unitary Patents, only to national validations.

The UP offers a cost-efficient way to confer, manage and maintain rights of a European Patent to a large geographical region by registration and annuity payment to a single authority on behalf of the group of UP/UPC participating countries, instead of individually in each desired country. This significantly reduced costs, administrative procedures and management compared to maintaining multiple national patents. It further reduces both cost and administration in registering sale and acquisition of patents or companies, licensing, contracts and management of all other tasks where lists of patents or contact with patent registers are involved.

Allowing only a single court, the UPC, to handle validity and infringement of Unitary Patents provides for consistency in decisions and proceedings to increase certainty and predictability within the group of UP/UPC-participating countries, contrary to the situation with individually validated patents.

Unified Patent Court (UPC)

The Unified Patent Court (UPC) is a single, specialized patent court common to the UP/UPC-participating countries, with the aim of consistent and effective procedures and decisions on validity and infringement of patents within that group of countries, including granting of provisional enforcement measures and awarding of damages. A decision by the UPC has direct effect in all the participating countries where the respective European patent is in force, regardless of the patent being validated with unitary effect or as a bundle of national validations.

The UPC has exclusive jurisdiction over Unitary Patents (UP), and no jurisdiction outside the area of the UP/UPC-participating countries. Further, the UPC initially co-exists with national courts with non-exclusive jurisdiction for traditionally validated European patents within the UP/UPC-participating countries. After a transitional period, which extends at least until 2030, the UPC will get exclusive jurisdiction also over traditionally validated European patents in the participating countries.

During the transitional period it is possible to opt out a traditionally validated European patent from the UPC’s jurisdiction, thereby leaving only the national courts as competent with respect to the respective patent. An opt-out does not expire, but can be withdrawn for the patent to again fall under the jurisdiction of the UPC. Opt-out and withdrawal of opt-out is only possible once, and only as long as no court action has been initiated for the respective patent. It is not possible to opt-out a Unitary patent from the jurisdiction of the UPC.

The UPC includes a Court of First Instance and a Court of Appeal. The first instance operates branches, called divisions, in most of the participating countries to accommodate the users, and applies a rotation system of patent judges to ensure that the court’s practice and decisions stay harmonized throughout all its branches.

The judges of the UPC include a mix of legally qualified judges and technically qualified judges to appreciate the technical aspects inherent to patents and patent infringement questions, and all the judges are experienced, former national judges or patent attorneys to warrant a high quality of decisions in the specialized patent court.

The UPC is aiming at providing expedient and highly effective procedures, with a goal for the first instance branches to issue decisions within one year from start of proceedings. This requires short deadlines putting some pressure on the parties, but also ensures that justice and certainty for the parties is reached relatively soon compared to many national patent courts.

 

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Jens Jeppesen
Partner, European Patent and Design Attorney
B.Sc. in electrical engineering specialized in software, data technology and data communication