A guide to the unitary patent & Unified Patent Court

The long anticipated unitary patent and Unified Patent Court (UPC) are in the final stages of approval and could be implemented in late 2022.

Here, you’ll find all you need to know about the unitary patent, including FAQs and insights, which will be updated regularly to keep you informed throughout the implementation period.

Murgitroyd’s global office network spans four continents, including Europe, where we have offices in the UK, France, Ireland, Finland, Germany, Italy and Switzerland. As we offer direct representation in 14 EU member states, our IP experts are well placed to answer your unitary patent questions.

For any questions regarding the unitary patent or Unified Patent Court that are not covered below, talk to our dedicated team or your usual Murgitroyd contact.

Download our briefing note for a detailed look at the UPC and what it means for your IP.

Read our latest UPC updates:

Contacts

Our dedicated unitary patent team:

Donnacha Curley

Director, Patents

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 jurisprudence, with rights being enforced, revoked or lapsing in respect of all participating member states via a singular, central act.

The unitary patent system builds on the EPC in that its pre-grant phase is unchanged from that of a ‘classic’ EP patent administered by the EPO. At this final stage and 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’.

A traditional 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 back in 2011, though the idea dates back over 50 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 take the place of 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.

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.

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

The remaining 21 states will be available 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).

Can I opt out of the Unified Patent Court?

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 exclusive jurisdiction of the UPC by registering an opt-out at the UPC Registry at any time after grant. There is no official fee for opting out.

A ‘sunrise period’, expected to last around four months, will be announced in the run up to commencement of the UPC, allowing patentees to register opt-outs of pre-existing European patents once everything is in place but before the UPC enters into force.

By opting out, infringement and validity will continue to be decided by the national courts. Opt-outs must be registered for individual granted European patents with the Unified Patent Court — not the EPO — which will keep a register. This will be a simple process and won’t involve any official fees.

If an opt-out is not registered, any existing patent granted in a participating EU member state 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 four-month ‘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 will work. 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 the 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 the date the UPC enters into force 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 provisional ‘sunrise period’ period will also allow applicants to explicitly request that the EPO delays its decision to grant, to ensure that the decision issues on or after the UPC date to enable 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 (centralised admin, single renewal fee, singularly effective infringement and revocation, etc.) as the preferred option.

Unitary patent renewals

Renewal fees for unitary patents may be less expensive than 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 equivalent to the fees that had to be paid for four countries under the ‘classic’ EP system.
– The single annual fee will be around €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 around 35k. When compared to the total fees for maintaining a classic EP validated in DE, FR, NL and IT, this means a saving of around €1.7k.

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 becomes an additional option.

How will patent translations be affected by the unitary patent?

Some translation will be required during the initial transition period. Any such translation will be for information purposes only — i.e., 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 may greatly reduce costs for patent filers.

How will renewals be affected by the unitary patent?

Renewal fees for unitary patents may be less expensive than the traditional requirement to pursue various national validations. Maintaining a unitary patent will require only one renewal fee to be paid, which will cost roughly the same as the present cost of renewing a European ‘bundle’ of patents in four territories.

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.

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.

Once the UPC enters into force, 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, 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, a unitary patent is obtained which 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 centralised revocation of an important patent?

If a particular patent provides significant commercial value, centralised 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 centralised administration of the unitary patent (for recordal of assignments, etc).

2. Does your patent protection need to extend beyond three European 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 minimising 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 registered proprietors (as currently recorded on the EPO register) to sign the request. As such, there must be 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 centralised administration of a unitary patent could be the better option.

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.

For any questions regarding the unitary patent or Unified Patent Court, talk to our specialist team at unitarypatent@murgitroyd.com or your usual Murgitroyd contact.

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