This spring, some interesting things are about to happen to the European patent system: the start of the Unitary Patent (UP) and the Unified Patent Court (UPC). The new system brings new options for patent holders and are aimed to simplify patent enforcement and reduce costs for validation and maintenance. The UP and the UPC will enter into force on June 1, 2023, while a co-called “sunrise period” already began on March 1, 2023. We hereby inform you about the most important features of this development.
The existing system, where granted European patents are validated nationally, will remain in place. However, the introduction of the UPC affects both existing and future patents, even if validated through the classical system. As explained in more detail below, it will be possible to opt out from the competence of the Unified Patent Court for a transitional period of at least 7 years.
The Unitary Patent
The Unitary Patent (formally “European Patent with unitary effect”) is a new patent that will provide uniform protection in all EU countries that have ratified the Agreement on a Unified Patent Court (“UPCA”). It is intended that the Unitary Patent will make it easier to obtain and enforce patents in the European Union, and at lower costs.
Please note that the option to obtain a Unitary Patents is only available for European Patents granted on or after June 1, 2023. Existing European patents will not be eligible for unitary effect.
Following the grant of a European Patent by the EPO, a Unitary Patent may easily be obtained by filing a single application with the EPO. This procedure eliminates the need for national validations and translations into many different languages (but note that during an initial period, the applicant will be required to furnish one translation into an official EU language). The Unitary Patent will thereafter be renewed by the payment of one single fee, which will be equal to the combined renewal fees in the four member states in which most traditional European patents are in force. Consequently, and especially if protection in many countries is desired, it is expected that obtaining and maintaining a Unitary Patent will be considerably cheaper than a “classic” European Patent (a bundle of nationally validated patents).
The unitary effect extends to all EU countries for which the UPCA has entered into force at the date of registration of unitary effect. From the start on June 1, 2023, the Unitary Patents will cover the following 17 EU countries:
AUSTRIA, BELGIUM, BULGARIA, DENMARK, ESTONIA, FINLAND, FRANCE, GERMANY, ITALY, LATVIA, LITHUANIA, LUXEMBOURG, MALTA, THE NETHERLANDS, PORTUGAL, SLOVENIA, SWEDEN.
It is expected that additional EU countries will ratify the UPCA over time, after the UP and UPC have launched. There may therefore be different generations of Unitary Patents, with increasing geographical coverage.
As explained in more detail below, the Unitary Patent can only be centrally enforced and invalidated at a single court, the new Unified Patent Court.
It should be noted that the Unitary Patent does not apply to non-EU countries, such as the United Kingdom, Switzerland, Norway and Turkey. Therefore, if protection is desired in European countries that are not part of the EU, or in EU countries that have not (yet) ratified the UPC agreement, it will be necessary to validate a granted European patent in those countries.
We will inform you of your options for obtaining a Unitary Patent and/or nationally validated patents during the course of prosecution of your European applications, such as following the issuance of an Intention to Grant.
Unified Patent Court
The Unified Patent Court (“UPC”) is a new court common to all EU countries that have ratified the UPCA, and will have exclusive competence to handle infringement and revocation actions proceedings concerning Unitary Patents, “classic” European Patents validated in one or more participating countries (unless opted out; see below), and any Supplementary Protection Certificates (SPC’s) based thereon. It is intended that the new court will harmonize the case law in the area of patent infringement and validity in EU countries. An important feature of the UPC is that its decisions will have direct and immediate effect in all participating countries. For patent owners wishing to sue third parties for infringement, a central action before the UPC may therefore be preferable to several separate actions before national courts, both in terms of money and effort. On the other hand, in case third parties start invalidity proceedings before the UPC, a successful attack may result in the central revocation of a patent in all participating countries.
The pros and cons of a Unitary Patent should therefore carefully be considered for each patent, and it is likely that different decisions may be reached in different cases, depending on e.g., the desired geographical protection, the overall importance of the patent for a certain product, and the assumed strength of the patent. We are happy to advise you in your considerations whether to apply for a Unitary Patent, based on the specific facts that are applicable to your European Patents.
By default, all classic European Patents (both existing and future) will fall under the competence of the UPC. Even though the judges of the UPC have experience from infringement and validity proceedings at national courts, the UPC remains a new court and the quality of its decisions is still unknown. This, together with the fact that an invalidity action before the UPC may result in a patent being revoked in all of the participating countries at once, leaves uncertainty to the holders of European patents.
During a transitional period of at least 7 years, therefore, the holders of classic European patents will be able to opt-out their patents from the competence of the UPC. In that case, only national courts will be competent to handle infringement and revocation actions concerning EP patents. For clarity, it is emphasized that that Unitary Patents cannot be opted out from the competence of the UPC. Any future patents that should not be subject to the jurisprudence of the UPC should therefore be validated through the classical system, and opted out. If an existing patent is to be opted out, the opt out should ideally be entered in the registry of the UPC before the end of the sunrise period (May 31, 2023), to make sure that third parties cannot start revocation actions before the UPC. Once any actions before the UPC have been started, an application to opt out cannot be lodged anymore. For future patents, the opt out should ideally be entered in the registry of the UPC prior to the issuance of EPO’s decision for grant.
A European patent that has been opted out may be opted in again upon further request, so as to make the UPC the competent court again. However, a new request to opt out may thereafter not be filed anymore.
We will reach out to you again soon, with the practical details for opting out classic European Patents from the competence of the UPC.
If you would have any questions in the meantime, please contact your personal attorney directly, by email or telephone. Alternatively, you may contact us via . Comprehensive information on the new Unitary Patent and the Unified Patent Court may also be found on the website of the EPO (https://www.epo.org/applying/european/unitary.html).
Novitas Patent AB