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.

Advantages

• 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.

Disadvantages

• 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.