The Unified Patent Court (UPC) and the Unitary Patent (UP) – A new patent arena in Europe

A new patent system will soon enter into force in Europe. Below you will find answers to the most common questions in connection with this shift.

Brann’s team of European Patent Litigators are ready to assist you with any questions that you may have in this regard.

What?

A completely new system for patents in Europe which allows for patent protection in the majority of the EU countries via a single patent, the so-called European patent with a unitary effect (Unitary Patent, UP). UP is supplemented by a new patent court (Unified Patent Court, UPC). The UPC will deal with a number of different proceedings, for example concerning infringements and declarations of invalidity of classical European patents, unitary patents and supplementary protection certificates (SPC). The purpose of this change is above all to reduce the costs of patents in Europe and to increase the legal certainty for both patent holders and third parties. The legal basis for the UPC is two EU regulations and a Court agreement, the Unified Patent Court Agreement, UPCA. UPC’s working methods including guidelines can be found in the Rules of Procedures, RoP.

When?

From the first of June this year, it will be possible to obtain a UP. On the same day, the UPC becomes active. Since the UPC will have jurisdiction over both UPs and the classical European patents and applications (already granted and granted in the future), it will be possible to exempt classical European patents and patent applications from UPC’s jurisdiction for a period of at least 7 years. A UP, on the other hand, can never be exempted from the UPC’s jurisdiction. Already now, you can request that previously granted European patents and/or European patent applications be exempted from the UPC’s jurisdiction.

How?

The European Patent Office will, just like today, examine and grant European patent applications. When a patent is granted, it will be possible to choose between a UP or a classical European patent in the countries that have ratified the UPCA. In other countries that have not ratified the UPCA, you must choose a classical European patent just as before, which must be validated in the countries that require this by translating all or parts of the patent and then paying annual fees to each national patent office. If you choose a UP, the validation takes place in the countries that have ratified the UPCA and you also only need to pay a single annual fee for these countries. The annual fee for a UP corresponds to the annual fee for a patent in the four countries where most classical European patents are traditionally validated. This makes it significantly cheaper to choose a UP if you want patent protection in many countries.

Where?

Currently, 17 EU countries have ratified the UPCA. Seven further EU countries have signed the agreement but have not yet ratified it. Three countries, Spain, Croatia and Poland, have chosen to stay out completely.

Why?

If you are interested in patent protection in many European countries a UP will enable this at a substantially lower cost than today. Litigating a patent before the UPC will probably also be cheaper and speedier than conducting parallel processes before national courts. As a patent holder, on the other hand, you also risk losing your patent in all participating countries in a single process. Whether you want to take advantage of the new possibility of a UP or let your classical European patent be handled by the UPC are important strategic decisions where many factors influence what is best for your particular business.

You

If you do not want disputes concerning your existing European patents to be handled by the UPC, you can request that these be exempted from the UPC’s jurisdiction (a so-called opt-out). In that case, we recommmend that this be done before the first of June this year to avoid a counterparty initiating a dispute at the UPC at its opening. Otherwise, you do not have to take any action right now. Even if you have requested that a European patent be exempted from the jurisdiction of the UPC, you may choose to opt it back in as long as no dispute has been initiated before a national court. When future European patents are granted, you will have to decide if you want to have a UP. If you do not choose a UP but instead chose a classical European patent in the UP states, you will have to decide whether you want a dispute to be handled by the UPC or by national courts (opt-out). If you have a European patent application that is close to being granted, it is possible to postpone the grant until the start of the system.

We

Brann has a large team of authorized European Patent Litigators with various technical skills who can represent you before the UPC and who can also help you with all kinds of strategic advice regarding the UP and the UPC.