FAQs: unitary patent & Unified Patent Court

The following are the most frequently asked questions about unitary patent implementation. Talk to our team at unitarypatent@murgitroyd.com to receive tailored advice for your business.

What is the unitary patent?

The unitary patent system promises to provide a patent proprietor with uniform protection and equal effect in all participating member states. For enforcement and validity, this unitary effect means that the UPC will have jurisdiction, with rights being enforced, revoked, or lapsing in respect of all participating EU member states that have ratified the UPC via a single, centralized forum.

The unitary patent system builds on the EPC in that its pre-grant phase is unchanged from that of a ‘classic’ EP patent and this is administered by the EPO as normal, including opposition and appeal procedures. Within one month of the date of grant, an applicant selects the form of EP protection as being either:

i) a ‘classic’ European patent
ii) a ‘unitary’ patent providing ‘unitary effect’.

If the applicant chooses to proceed with a ‘classic’ European patent post-grant, validation procedures are unchanged.

A ‘classic’ European patent is essentially a bundle of national rights which require separate renewal, enforcement, and (in some cases) translation. Contrastingly, as a transnational and singular right, the unitary patent will have one renewal fee and be centrally enforced at a ‘Unified Patent Court’. In this way, it offers proprietors cost savings.

The establishment of a unitary patent system in Europe was agreed by European Union (EU) member states in 2011, though the idea dates back over 40 years.

What is the Unified Patent Court?

Based in Paris and Munich, the Unified Patent Court (UPC) is an entirely new transnational court, which may eventually replace national courts in Europe on all questions concerning the infringement and validity of patents granted by the European Patent Office in participating EU member states. This includes both unitary patents and ‘classic’ European patents which have been validated in participating EU member states.

The UPC includes a Court of First Instance and a Court of Appeal, which will have streamlined procedures and judges with legal and technical specialisms. All of this is expected to make the EU a more attractive proposition to innovative businesses and increase its global economic competitiveness.

Who are the participating member states?

There are 38 Contracting States to the EPC available as classic EP patents, including both EU and non-EU countries.

This map was last reviewed in May 2023.

Currently, 24 of the 27 Member States of the European Union have signed-up to the unitary patent system. However, of these only 17 are expected to be available under the unitary patent system when it comes into force, with others expected to follow.

These are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

The remaining 21 EPC states can still be validated as ‘classic’ EP patents (including Ireland, Norway, Spain, Switzerland, Turkey and the UK).

This means that patent owners will most likely use a combination of these two patent types — ‘classic’ and ‘unitary’.

More flexibility for patent protection

The establishment of the UPC means that there are now at least three possible routes to secure a patent in Europe:

i) individual national/local filings
ii) a ‘classic’ EP, validated in selected territories
iii) a unitary patent.

We anticipate that most clients will opt for a combination of these routes, providing more flexibility. Our pan-European office network means that we are well-placed to support you with any of these options and reduce the costs of securing patent protection in the extended European region (under the EPC).

From 1 January 2023, applicants can file early requests for unitary effect and a delay in issuing the decision to grant a European patent at the EPO.

Can I opt out of the Unified Patent Court’s jurisdiction?

The creation of the UPC will pave the way for a significant change to the patent litigation landscape — the UPC will deal with infringement and validity issues for both UPs and EPs in all ratified EU Member States.

For an initial ‘transition period’ of seven years (which may be extended), it will be possible to remove a patent granted by the EPO from the jurisdiction of the UPC by registering an opt-out at the UPC Registry at any time, prior to the commencement of litigation. If opted out, litigants will have a choice of using either the national courts or UPC for validated EPs. This will be a simple process with no official fees.

By opting out, infringement and validity issues will continue to be decided by the national courts. Opt-outs must be registered with the Unified Patent Court — not the EPO — for each granted European patent. The Unified Patent Court will maintain a register of opt outs.

Ahead of the implementation of the UPC on 1 June 2023, the ‘sunrise period’ (March to May 2023) will allow patent owners to register opt-outs for existing EPs and pending European patent applications.

This can be done either:

– Manually (via electronic forms)
– Automatically (via the API process)

If you wish to opt out, we can do this in bulk for your portfolio.

To opt out your portfolio via the API process, the following details are needed for each granted EP patent or pending application:

– Applicant name
– Patent number
– Address
– City
– Country
– Postcode
– Country code
– Email address
– Internal reference
– Number and names of IP holders
– SPC number for each territory (if an SPC)

If an opt-out is not registered, any existing patent granted in a participating EU member state where the UPC is ratified will be under UPC jurisdiction by default. Third parties will be able to challenge the validity of your patent rights soon after the UPC comes into force, locking you into the new procedures.

Since existing validations will be opted in by default and the UPC has no pre-existing case law, we expect that many patent owners may consider opting out during the ‘sunrise period’. This will prevent them from being drawn into the UPC system through a revocation action.

It will then be possible to opt in later when we know more about how UPC procedures and case law develop, provided that national litigation is not ongoing. The approach you should take will depend on your unique circumstances, so we recommend speaking to one of our experts first before deciding.

Supplementary Protection Certificates (SPCs) will follow what happens on the EP patent on which they are based. So, if the European patent is opted out, the SPC must also be opted out. If the SPC and patent are owned by different entities, all owners must opt out in agreement. This will need further attention by all parties concerned.

When can I benefit from a unitary patent?

Only European patents granted on or after 1 June 2023 will be eligible for unitary effect. Once the UPC is in force, applicants can file a request for unitary effect at the EPO within one month of European patent grant publication.

Before the UPC enters into force, the ‘sunrise period’ will allow applicants to explicitly request that the EPO delays its decision to grant. This will ensure that the decision issues on or after the ‘UPC date’, enabling a request for a unitary patent. The unitary patent is a post-grant procedure (pending applications are not affected), so requesting this delay of grant may be attractive if you see a unitary patent (centralized admin, single renewal fee, unitary effect of infringement and revocation, etc.) as your preferred option.

How will renewals be affected by the unitary patent?

Renewal fees for unitary patents may be less expensive than for a ‘classic’ EP patent. Maintaining a unitary patent requires only one renewal fee paid to the EPO.

This means that:

– The unitary patent renewal fee will be approximately equivalent to the fees that had to be paid for four countries under the ‘classic’ EP system.
– The single annual fee will be ~€5k (cumulative) for the first ten years (of the 20-year term).
– Total fees for maintaining a unitary patent over the full 20-year term could be ~€35k. When compared to the total fees for maintaining a classic EP validated in DE, FR, NL and IT, this is a potential saving of ~€1.7k.

Further significant cost advantages may arise in any post-grant assignments, which can be recorded centrally in the register of unitary patents administered by the EPO, rather than separately in each national register.

Where the UK is validated, UK patent renewal costs must also be accounted for, due to the UK no longer being an EU territory.

How are pending European patent applications affected by the unitary patent?

The unitary patent is a post-grant procedure, so pending applications are not affected. However, you may wish to delay the imminent grant of any European patents, so that the unitary patent is an option.

How will patent translations be affected by the unitary patent?

Translation of patents granted into English into an EU language will be required during an initial six-year transitional period, as will translation of a patent granted in either French or German into English. Any such translation will be for information purposes only, to reduce the risk of errors impacting protection. After the transition period has ended, the translation of granted unitary patents will not be required, except in litigation cases. This will greatly reduce costs for patent owners.

What do I need to do now in anticipation of unitary patent implementation?

We recommend that you speak to our experts ahead of unitary patent implementation so that we can help you form a plan best suited to your individual needs.

From 1 June 2023, the proposed default conditions upon the grant of an EP patent are:

1. The granted patent will be under the jurisdiction of the UPC. An opt-out may be requested at any time prior to litigation starting, including during the initial ‘sunrise period’ or at any time post-grant (while the ‘transitional’ provisions are in force). Any enforcement and revocation would then proceed exclusively at the individual national courts and the UPC would have no jurisdiction.
2. The granted patent will be a classic EP patent, requiring national validation. Unitary effect must be specifically requested. If unitary effect is requested, any unitary patent obtained falls under the exclusive jurisdiction of the UPC.

For the moment, patent owners should review their portfolios and start making decisions about the UPC.

The following questions might help to guide you:

1. Are you comfortable with the potential for centralized revocation of an important patent?

If a particular patent provides significant commercial value, centralized revocation in all 17 states could be a significant concern. If so, then opting out of the UPC is probably needed during the ‘sunrise period’ (note that opting out is only a ‘transitional’ measure for an initial seven years). If your EP patent is strong and/or litigation is unlikely, then pan-European revocation may not be a great concern and you may consider it better to take advantage of the common renewal fee and centralized administration of the unitary patent (for recordal of assignments, etc), provided this makes sense based on your IP strategy.

2. Does your patent protection need to extend beyond four EU states?

If not, then the ‘classic’ system of separate validations may be more cost-effective. If you require filing in four or more states and minimizing cost is your priority, a unitary patent might be the better option.

3. If your patent is jointly owned, can you reach an agreement among all proprietors on whether to proceed with unitary effect?

Requesting unitary effect (or opting out) requires all proprietors, as currently entitled to be recorded on the EPO register, to sign the request. As such, there must be an agreement to proceed. If agreement cannot be reached, the patent will proceed with the above default provisions.

4. Is it likely that you will transfer or license your EP patent, or change the company name or address?

If so, the centralized administration of a unitary patent may be the better option depending on your validation strategy.

5. Are you concerned that the UPC has no existing case law?

If so, it may be wise to consider opting out during the ‘sunrise period’. This will prevent your patent from being drawn into the UPC via a third party filing a central revocation action.

If you have any questions at all about the UPC and what this means for your IP — or if you would like to opt out your portfolio — speak to your usual advisor or our dedicated unitary patent team at unitarypatent@murgitroyd.com.