Since the Agreement on a Unified Patent Court (UPCA) came into force on 1st June 2023, it is possible to request that a European Patent (EP), once granted, be applied in a unitary way. The resulting so-called Unitary Patent (UP) provides uniform patent protection in all the countries which have ratified the UPCA.
The Unified Patent Court (UPC) has exclusive jurisdiction with respect to the validity, enforcement and infringement of the unitary patent.
With a UP, it is still possible to acquire EP patents and/or national validations of EP patents.
UPs have a unitary effect in all participating member states which have ratified the UPCA by the date of the EP being granted – 17 UPCA countries in June 2023 (dark blue).
National validation remains necessary in:
- UPCA member states having not
yet ratified the UPCA by the date of the EP being granted (light blue) - EU member states (3) that do not participate in the UPCA (dark and light red)
- Non-EU member states of the European Patent Convention (grey)
It is important to highlight that granted UPs shall not be extended to countries ratifying the UPCA after the UP has been granted. Therefore, several generations of UPs differing in their geographical scope will exist.
The centralised examination procedure of EP applications (before they have been granted), and the post-grant opposition procedures at the European Patent Office (EPO), are not modified. A request for a UP has to be filed with the EPO, within 1 month from the date the patent’s granting has been published. No official fees are due for such request.
If national validation remains the preferred protection route, an opt-out request may be filed. The corresponding bundle of national patents will thereby be withdrawn from the jurisdiction of the UPC for their entire lifetime and the national courts will retain exclusive jurisdiction.
Key Advantages vs Risks and Drawbacks
| Simplified Administration | But |
| One single request to be filed with the EPO. | National validation remains required in UPCA member states which have not yet ratified the UPCA and in non-UPCA countries. |
|
One single patent register for a UP, including legal status, licensing, transfer, limitation, revocation. One single registration of licenses and transfers at the EPO under a single legal regime. |
Licensing remains possible for selected UPCA countries, enabling licenses to be granted on one UP to different licensees in selected UPCA countries. |
| Cost Advantage | But |
| One single translation: translation of the claims into English, French and German only. Complete translation of the patent specification into the national languages of UPCA-countries is no longer required upon UP grant. | During a 6-year transition period, one single full translation of a UP patent into any official language of an EU member state is required. Translations are also required in some non-UPCA countries (e.g. Spain). |
| One single renewal fee: a single annual renewal fee payable in euros to the EPO (amounting to the cumulated annual fees of only 4 countries while covering all UPCA countries). |
Withdrawal is only possible if all participating UPCA countries agree (all or nothing). There is no possibility of patent pruning. Additional renewal fees remain due in non-UPCA countries upon national validation (e.g. GB). |
| One single litigation in front of the UPC as compared to multiple parallel national litigation procedures for a traditional EP. For infringement actions, a fixed fee and value-based fees are due. For revocation actions including counterclaim for revocation, only a fixed fee is due 1. | In proceedings before the UPC, costs of legal dispute incurred by the prevailing party are to be reimbursed by the losing party and can be high depending on the value being disputed. |
| Legal Certainty | But |
|
One Court. The UPC has exclusive jurisdiction for UP enforcement, infringement and validity with UPC decisions applying to UP in all UPCA countries. A single UPC decision for infringement enabling UP rights to be enforced in all UPCA countries at once. The UPC benefits from the competences of specialised judges and should provide rapid judicial decisions (with English as the language of the proceedings). |
Forum-shopping among UPCA countries jurisdictions is not possible for a UP. There is the risk of a single central revocation of UP rights in all UPCA countries at once. The UPC is a new court; there could be some uncertainty about the quality of decisions in the early phases of UPC operations given the lack of related case law. |
1 More information on fees can be found here: https://www.unified-patent-court.org/en/registry/court-fees
Links (upcoming)
Patent memo
Patentability memo
Contact
Réseau LiEU
contact@reseaulieu.be
+32(0)81/62.25.94
