After many years of planning, the EU Unitary Patent System will soon become a reality, allowing all participating States to be bound together in single, indivisible patent.
The Current System
Currently, inventions can be protected in Europe either via national patents, or via a European patent. A European patent is examined and granted centrally by the European Patent Oﬃce (EPO). However once granted, European patents must be validated and maintained in each speciﬁc country where protection is desired.
Validation requirements and the associated fees vary between countries. Some countries require full translations of the speciﬁcation into the local languages, others require only the claims to be translated. Often local attorneys must be appointed.
The Unitary Patent
The Agreement on a Uniﬁed Patent Court (UPCA) was signed in 2013. Since then the establishment of the Uniﬁed Patent Court (UPC) has faced many challenges. However, the entry into force of the UPCA will happen on 1 June 2023. When it comes into eﬀect, applicants will be able to elect for their granted European patent to have ‘unitary eﬀect’ across all of the participating countries. This election for ‘unitary eﬀect’ will need to be done within one month of the date of grant.
Early requests for unitary eﬀect can now be ﬁled if a Rule 71(3) Communication has already been issued. This Communication issued when the examining division has indicated its intention to grant a patent.
A European patent with unitary eﬀect, or EP(UP) patent, will be a single, indivisible right.
A three month “sunrise period” immediately preceding the start date began on 1 March 2023. During this period it is possible to request a delay in the grant of a European Patent until the UPCA has entered into force, so that the application can lead to Unitary Patent protection.
The Unified Patent Court (UPC)
Once the Agreement on the UPC has come into eﬀect, a new court, the UPC, will have jurisdiction over all EP(UP) patents.
The UPC will comprise a Court of First Instance and a Court of Appeal, the Court of First Instance composed of a central division with seats in Paris and Munich, along with several other local and regional devisions. The Court of Appeal will be located in Luxembourg.
Under the current system, European patents must be litigated separately in each country where they have eﬀect. For example, a decision by a court in one country on the validity or infringement of a particular European patent currently has no eﬀect in a diﬀerent country where the same patent is validated. Parallel litigation in various EPC countries can increase costs, and may result in inconsistent decisions from diﬀerent national courts
Which countries are taking part?
Currently 17 countries have ratiﬁed the UPC agreement and will therefore be covered by the ﬁrst unitary patents:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.
It is expected that the following countries will eventually ratify the agreement, and therefore be covered by future unitary patents:
• Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
The following EU member states have also decided not to participate:
• Spain, Poland and Croatia.
The European Patent Oﬃce is not a European Union organisation. The following states are members of the European Patent Oﬃce but are not members of the European Union, and therefore cannot participate in the UPC:
UK, Norway, Switzerland, Liechtenstein, Turkey, Iceland, North Macedonia, San Marino, Albania, and Serbia.
An EP(UP) patent will only cover the countries that have ratiﬁed the UPC agreement at the time of requesting ‘unitary eﬀect’. – So it will be necessary to validate in those countries that have not ratiﬁed and those which are outside the UPC.
All EPC contracting states can continue to be validated in the usual manner.
Where unitary eﬀect is requested all EPC contracting states that are not party to the UPC can continue to be validated in the usual manner.
• Removes the need for complex and often costly national validation procedures.
• No oﬃcial fees are payable when ‘unitary eﬀect’ is requested.
• One renewal fee is payable centrally to cover all participating countries.
• If you usually validate a European patent in three or more of the participating states then it will be cheaper to proceed via the EP(UP) route.
• All post-grant administration will be handled centrally by the European Patent Oﬃce, removing the need to appoint local attorneys.
• EP(UP) patents can only be litigated centrally in the UPC and decisions have eﬀect in all states covered by the unitary patent, removing the need for parallel litigation in multiple countries.
• UK based European Patent Attorneys with recognised litigation qualiﬁcations, as we are at Hargreaves Elsworth, will have rights of audience before the UPC meaning that we can represent clients before the UPC.
• Fixed court fees are payable for actions, see examples below (for actions valued up to and including EUR 500,000)
|Infringement action||EUR 11,000|
|Counterclaim for infringement||EUR 11,000|
|Action for declaration of non-infringement||EUR 11,000|
|Application to determine damages||EUR 3,000|
|Revocation action||EUR 20,000|
The UPC should oﬀer reasonably speedy decisions, the target time frame is 12 months from the commencement of proceedings.
• Does not include any EPC member states that are not EU states (For example UK, Switzerland). These states will need to be validated and maintained as usual.
• Does not include any EU states that have not ratiﬁed the agreement (e.g. Spain). These states will need to be validated and maintained as usual.
• A full translation is required into one EU language. However, even with the additional translation costs, the total cost is likely to be lower if you typically validate in at least three of the participating states.
• If you usually validate a European patent in less than three of the participating countries then renewal fees will be higher.
• Central litigation – this would put a unitary patent at risk across multiple countries in one go.
• EP(UP) patents can only be enforced in the Uniﬁed Patent Court. Currently this is an untested system.