Overview of the Unitary patent protection and the Unified Patent Court

Considering that the Unitary Patent (UP) and Unified Patent Court (UPC) will likely come into force and become operational in second half of 2022, please find herewith a brief summary of what these changes in the European patent system will entail.

European patent with unitary effect (‘Unitary Patent’)

At this moment, upon the grant of a European patent, the patent holder needs to choose in which of the 38 EPC countries the European patent is to be maintained. For each of the countries where validation is desired, national official fees, agent fees and often translation fees need to be paid. In addition, yearly renewal fees also need to be paid for each of the chosen countries.

Twenty five of the 27 EU countries[1] have initiated enhanced cooperation to bring about the Unitary Patent system, in order to provide for a European Patent with unitary effect (‘Unitary Patent’) across their territories. The Unitary Patent will only require a single translation of the patent (during a transitional period of 6 years) and a single yearly renewal fee to be paid. All post-grant administration, including the registration of the unitary effect and the payment of the renewal fee, will be handled centrally by the EPO. Importantly, the choice for a Unitary Patent will be entirely optional, and patent holders may instead use the existing system of validations in the individual EPC states. Moreover, such validation will remain necessary for any EU countries not participating in the Unitary Patent system and for all non-EU EPC states.

Importantly, while 25 EU countries have participated in the enhanced cooperation, the availability of a unitary designation for a given country is conditional on that country’s signature and ratification of the Unified Patent Court Agreement (UPCA), which establishes the Unified Patent Court (UPC). Currently, only 17 EU countries[2] have ratified the UPCA, and therefore the Unitary Patent will only be available for these 17 countries when the system enters into force later in 2022. The number of participating EU countries is expected to grow in the coming years, although Spain, Croatia and Poland are already known to remain outside of the system in the foreseeable future.

All in all, the Unitary Patent therefore makes it possible for patent holders to obtain uniform patent protection in the 17 participating EU countries at a lower cost (compared to individual validations in all of these countries) by submitting a single request to the EPO and payment of a single yearly renewal fee.

As already said, choosing for the Unitary Patent is optional, the existing validation procedures for each of the 38 EPC countries remain available in parallel. It is however not possible to retroactively convert granted European patents having been validated in the participating EU countries into a Unitary Patent or vice versa.

Unified Patent Court (UPC)

At this moment, national courts are responsible for infringement and/or validity actions relating to European patents in their respective territories, leading to parallel court procedures in case infringement takes place on a pan-European level. The Unified Patent Court (UPC) will be a court common to the participating EU countries aiming to provide a simpler and more efficient judicial system, with one court having jurisdiction across all EU countries that have ratified the UPC agreement[3] for all European patents and Supplementary Protection Certificates (SPC) obtained based on European patents. The UPC will therefore issue judgments on the infringement and/or validity of European patents having effect throughout the EU countries participating in the UPC agreement.

The UPC will have exclusive jurisdiction over EP patents with unitary effect and for classical EP bundle patents, although a 7-year transitional period has been foreseen during which classical EP bundle patents may be opted out of the exclusive jurisdiction of the UPC, such that they will continue to be litigated before national courts.

Please do not hesitate to contact us to discuss what the best option is for you patent portfolio.