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.

Read our latest UPC updates:

Contacts

Our dedicated unitary patent team:

Laurence Bibow

Senior Patent Attorney

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 effective patent protection in many European states. A unitary patent will be obtained in a post-grant procedure at the European Patent Office (EPO) in a way that resembles current validations. There is no application process to secure a unitary patent.

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 classical 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?

The Unified Patent Court Agreement (UPCA) is open to accession by any of the 27 Member States of the European Union. To date, 24 of these have signed the agreement and plan to join the unitary patent system.

These are: Austria, Belgium, Bulgaria, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovakia, Slovenia and Sweden.

Croatia, Poland, and Spain did not sign the agreement, but may sign in the future.

However, not all 24 countries have yet ratified the agreement. Countries that are yet to ratify can only be covered by a classical European patent. As more countries complete their ratification, more will then be covered by the unitary patent, up to the stage when the final (24th) country has ratified.

The 16 EU member states that have currently ratified the agreement are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. Germany plans to ratify the agreement when the UPC is operational, serving as a trigger for the agreement to enter into force.

A given unitary patent will only cover the European countries that had ratified the agreement at the time the unitary effect was registered by the EPO. The territorial coverage of a unitary patent will remain the same during its lifetime, even if more countries later ratify the agreement.

The UPC does not apply or have any effect on non-EU member states of the EPC which includes the UK, Monaco, Liechtenstein, Norway, Switzerland, Turkey, Iceland, North Macedonia, San Marino, Albania and Serbia.

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.

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.

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, there will be a provisional period where applicants that wish to get a unitary patent can explicitly request that the EPO delays its decision to grant to ensure that the decision issues on or after the UPC date.

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.

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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