A few questions and answers about the Unitary Patent and the UPC

Header image: Epo.org

The EU patent package comprising the Unitary Patent and the Unified Patent Court (UPC) seems to be on track to become a reality in the near future after a period of uncertainty due to Brexit. Here is what you need to know. 

What is the Unitary Patent?

The Unitary Patent is a European patent, granted by the European Patent Office (EPO). It will be a single patent with unitary effect for all of the European countries that participate in the Unitary Patent at the time the patent is granted. This is in contrast to the present system, in which a European patent after grant becomes a “bundle” of national patents.

Will it replace the ”classical” European patent?

No, the Unitary Patent will be an additional option for European patent applicants that will exist alongside “classical” European patents. The current application and examination procedure at the European Patent Office will remain the same, and a decision about whether to choose the new Unitary Patent or a classical European patent will not have to be made until the patent is granted.

Should I choose a Unitary Patent?

Whether to choose one or the other depends on your business strategy. Patent proprietors only having business interests in a few European countries will probably not benefit from Unitary Patents. Patent proprietors having business interests in the entire EU – and who typically validate a European patent in many countries – will achieve significant savings from Unitary Patents. Another consideration is that with the Unitary Patent you have “all your eggs in one basket”, which means that the patent stands or falls as a whole for all of the Unitary Patent countries.

How will Unitary Patent costs compare to costs for a classical European patent?

Patent owners who validate their European patents in many countries will be able to benefit from greatly reduced validation costs and annual fees by choosing a Unitary Patent. For European patents in English, the Unitary Patent will only require filing of a single translation of the patent into any official language of the European Union. It should be noted, however, that for countries that are not part of the Unitary Patent system, the translation and validation requirements will remain unchanged.
In addition, there are potentially significant savings on annual fees, since only a single annual fee will be paid for a Unitary Patent. This fee has been set as the sum of the annual fees that would otherwise be paid in the four countries with the greatest number of validations (currently Germany, France, the UK and the Netherlands). On the other hand, it will not be possible to reduce this annual fee by abandoning Unitary Patent coverage for some countries.

Image: Epo.org

What is the Unified Patent Court?

The Unified Patent Court will be a single specialized patent court having several divisions, including a Central Division with branches planned for Paris, London and Munich as well as local and regional divisions, for example a local division in Denmark, and an Appeals Court in Luxembourg. The UPC may potentially cover the entire EU, although at least initially it will only cover a limited number of EU countries. It will decide on validity and infringement of both Unitary Patents and classical European patents in the EU member countries covered by the Unitary Patent.

What if I want to continue to use the national courts for my European patent rather than the UPC?

As mentioned above, the UPC will also have jurisdiction over classical European patents. However, it will be possible to opt existing European patents out of the UPC by filing an opt-out request before the UPC begins operations. Opting out of the UPC will also be possible during a long transitional period of at least seven years for European patents granted after the UPC system starts. This will require that the patent is validated as a classical European patent and that an opt-out request is filed.

How will the UPC work in practice?

The UPC will operate with short deadlines, and all evidence will have to be submitted at the earliest possible opportunity (front-loaded system). This increases the importance of thorough freedom to operate analyses as part of your business. Lack of validity will be a valid defense (counterclaim for revocation) in infringement proceedings at the UPC.

When will the Unitary Patent and the UPC take effect?

The European Patent Office (EPO) and the participating countries are in the final stages of establishing the Unitary Patent and the Unified Patent Court (UPC). The new system was supposed to take effect shortly after 13 EU countries had ratified the UPC. However, there has been a few setbacks on the way.
Firstly, there have been many questions since the Brexit referendum of 2016 and more so since the July 2020 announcement of the British government to withdraw from this new European patent court system. Secondly, the Federal Constitutional Court of Germany in March 2020 declared the German ratification of the UPC void, primarily for formal reasons, and the German parliament therefore has to vote about the German ratification again.
In other words, the question of when the UPC will enter into force remains unanswered, but it seems that there is still a political will in Europe to move forward with the UPC system.

Plougmann Vingtoft is prepared for the UPC

Eight European Patent Attorneys at Plougmann Vingtoft have completed the CEIPI Course on Patent Litigation in Europe at the University of Strasbourg. Therefore, they will be eligible to receive the European Patent Litigation Certificate under the UPC when it enters into force. Thus, we are prepared to represent our clients in this new system. The eight UPC experts are listed to the left.

The EPO member states

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