The possibility of obtaining a European patent with unitary effect and of a single court having jurisdiction to deal with disputes over infringement and validity of European patents is close. Major changes to patent protection for inventions in Europe and patent litigation are likely to take place at the end of 2022, or early 2023.
The Unified Patent Court (UPC) will be established after a preparatory phase which should last 8-10 months and which was initiated on January 19 2022. The decisions of the UPC will produce their effects in EU member states that will have ratified the UPC Agreement.
As a consequence of Brexit, the UK is no longer a party to the UPC Agreement (UPC Agreement). Spain and Poland, despite being members of the EU, have announced that they will stay out of the system.
To date, 16 countries have ratified the UPC Agreement, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. It is expected that Germany will deposit its instrument of ratification of the UPC Agreement when the preparatory phase is sufficiently advanced for the UPC to be considered operational. This ratification by Germany will trigger a preliminary period of three to four months before the entry into force of the UPC agreement and thus the possibility to refer a case to the UPC.
The regulations establishing the European patent with unitary effect (unitary patent or UP) will be applicable, in the participating countries, at the same time as the entry into force of the UPC Agreement. A European patent with unitary effect will be a ‘classic’ European patent granted by the European Patent Office (EPO) but for which, at the time of the grant, the applicant has requested unitary effect.
The applicant will then have their unitary patent for the countries concerned (the participating countries having ratified the UPC agreement) and their European patent for the other member states of the European Patent Convention (EPC) (this European patent will have to go through the standard ‘validation’ procedures to bring the granted patent into effect in each country concerned. These countries may include the UK, Spain and non-EU EPC countries. The list of countries which are not signatory to both the Unitary Patent Regulations and the UPC Agreement, and in which the unitary effect will not be applicable, is as of today: Norway, Switzerland, Liechtenstein, Monaco, Republic of Northern Macedonia, Serbia, Albania, San Marino, United Kingdom, Iceland, Turkey, Croatia, Spain and Poland) .
If the unitary effect is not requested, the patent will remain a classical European patent. The unitary patent will be maintained by the payment of a single annual fee to the EPO, the amount of which corresponding to the combined annual fees payable in the four main European countries.
For a transitional period of not less than six years and not more than 12 years, the application for unitary effect will have to be accompanied by a translation of the description of the European patent into English if the patent is in French or German, or a translation of the description into any one of the languages of the EU if the patent is in English. At the end of this transitional period, no translation will be required after the grant in order to obtain the unitary patent. The unitary patent will provide uniform protection in the countries concerned.
The UPC will have exclusive jurisdiction on infringement and invalidity litigation concerning unitary patents, and the decision handed down by the UPC will be applicable to all countries covered by the unitary patent. The UPC should lead to a simplification of litigation and the harmonisation of decisions in Europe in the patent field.
In the long term, the UPC will be the court with exclusive jurisdiction for litigation, including infringement and validity, for all patents granted by the EPO in countries that have ratified the UPC agreement, whether they are unitary patents or ‘classic’ European patents.
However, for a transitional period of seven years (which may be extended for up to seven additional years), litigation involving ‘classic’ European patents may be brought before national courts or the UPC, at the choice of the claimant. During this transitional period, the proprietor of a ‘classic’ European patent may, by filing an opt-out application, exempt their European patent from the jurisdiction of the UPC, the exclusion of the UPC continuing to apply even after the end of the transitional period. However, filing an opt-out application will no longer be possible after the end of the transitional period.
The UPC will be self-funded, so the plaintiff will have to pay a fee based on the estimated value of the dispute. It will not be necessary for the plaintiff to have standing to bring a case before the court.
When to file an application for a unitary effect?
From the entry into force of the regulations on the unitary patent, an application for unitary effect may be filed at the EPO, within one month of publication of the mention of the grant of a European patent, provided that the patent has an identical set of claims for all the states concerned and that all countries where the unitary patent is applicable are designated.
The EPO has implemented transitional measures: it will also be possible to file early requests for unitary effect during the period prior to the entry into force of the UPC Agreement, for European patent applications for which an intention to grant (notification under Rule 71(3) EPC) has been sent by the EPO. The possibility of requesting a delay in issuing the decision to grant a European patent will also be offered, under certain conditions during this prior period, in order to give the applicant the opportunity to file an application for unitary effect.
When to file an opt-out request?
An opt-out excludes the jurisdiction of the UPC for the duration of the patent's validity. An opt-out can be withdrawn (opt-in), but only if an action has not already been brought before a national court. After an opt-in, it will not be possible to re-file an opt-out.
An opt-out request may be made in respect of any published European patent application and any ‘classic’ European patent, provided that no action involving the said application or said patent has been brought before the UPC. The opt-out of a unitary patent will not be possible.
An opt-out request may be filed under these conditions at any time up to one month before the end of the transitional period and also during a so-called ‘Sunrise Period’ of at least three months before the entry into force of the UPC Agreement.
What are the actions to be taken?
It is important to identify the European applications/patents for which it would be preferable to exclude the jurisdiction of the UPC, in order to be able to file an opt-out application, as soon as possible.
The interest of a unitary patent and, where appropriate, the use of the transitional measures proposed by the EPO are also to be assessed on a case-by-case basis.
Specific provisions on decision-making on unitary effect and opt-out applications, as well as on the choice of jurisdiction in the event of a dispute must be provided for in some contracts.
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