A new unitary patent and unified patent court

The Unified Patent Court or UPC is a new Patent Court for all EU Member States that have ratified the UPC Agreement. There are currently 18 EU MS participating in the UPC which opened its doors on 1 June 2023. Additional EU MS are likely to join at a later stage. The primary aim of the UPC is to provide a harmonised system of patent litigation within the EU. The UPC will have exclusive jurisdiction for patent litigation (validity and infringement) relating to the new European patent with unitary effect or unitary patent. For a transitional period of at least 7 years from the start of the UPC, the UPC will have jurisdiction over existing European patents that are not opted-out. Patentees will be able to enforce their UP or bundle of EPs in a single action before the UPC and third party challengers will be able to bring a central revocation action against a UP or bundle EP that has not been opted-out. During the transitional period, there is the possibility that a bundle EP that has not been opted-out of the UPC’s jurisdiction could be litigated in before the UPC and a national patent court.

A Unitary Patent or UP is a new multi-territory designation that has been available since 1 June 2023. Requesting a UP will create a European patent with unitary effect across all of the EU member states that have ratified the UPC Agreement at the date of grant. This is fixed for the life of the patent and will not be extended if further EU MS join the UPC. At present a UP covers 18 EU MS, including Germany, France, Italy and The Netherlands but if more countries ratify the UPC Agreement, this could rise to 24 EU MS. Irrespective of the number of EU territories covered by the UP, there is a single renewal fee (which cannot be reduced by “dropping” countries), payable to the EPO. All UPs are subject to the exclusive jurisdiction of the UPC. This differs from the current system where EPs need to be validated in each national patent office post-grant and effectively become a “bundle” of national rights. For patentees who validate in at least 4 participating UPC countries, a UP has the potential to represent a significant cost saving.

All European patents are prosecuted centrally through the European Patent Office. Currently, on grant, the EP can be validated at a national level in each of the 39 European Patent Convention countries. The EP becomes a bundle of national EP rights. Since 1 June 2023, it has been possible to request a European patent with unitary effect, that is a single, indivisible patent right across the (currently) 18 EU Member States that have ratified the UPC Agreement. Currently a further 7 EU MS have signed the UPC Agreement and if they ratify, then UPs that are granted after their ratification will have an extended territorial coverage. It is expected that Ireland will seek to ratify the UPC Agreement in 2024. The coverage of a given generation of UP will stay the same for the entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect.

Since 1 June 2023, any European patent with unitary effect (UP) or any EP that has not been opted-out from the UPC’s jurisdiction can be litigated centrally before the UPC in a single action. This is a significant change in the European patent landscape and is expected to bring genuine harmonisation of the application of the EPC in EU MS over time.

To be eligible for a UP request, the EP application must grant with the same set of claims for all the R-MS. All 25 EU MS who agreed to enhanced cooperation for unitary patent protection must be designated. The request for unitary effect and required translation must be made within one month of grant of the EP. The one-month deadline is non-extendable. Refusals of a request by the EPO for grant of a UP can be appealed to the UPC.

The renewal fees have been set as equivalent to the renewal fees of the 'Top 4' states in which EPs were validated in 2015.

For patentees who validate widely across EU MS, this could represent a significant saving. This needs to be balanced against no ability to taper and reduce renewal fees at a later date. Further, the requirement for a full translation of the specification must be included in the cost calculation.

Applicants must provide a full translation in English of the patent, if prosecuted in German or French. If prosecuted in English, then applicants must provide a full translation in the official language of any EU Member State. If issuing legal proceedings, Defendants can ask for full translation to the Defendant's language.

Litigation in the UPC should cost less than litigating a patent across a number of national courts. The Court fees for infringement proceedings and Preliminary Injunctions have been set at €11k plus a value-based cost (€2.5 - €325k). Revocation actions fees have been set at €20k. There is also a value-based cap on recoverable costs up to €1.5m for an action worth greater than €50m.

The UPC has appointed 42 legally qualified patent judges (LQJ) and 75 technically qualified judges (TQJ), all of whom are nationals of UPC member states. Legally qualified judges must have the qualifications to be appointed as a Judge in the national patent court and have been drawn from the UPC countries’ national patent courts. The majority of LQJ have been appointed on a part-time basis and for the foreseeable future will continue as judges in the national patent courts. By contrast, the majority of the appointed TQJ are European patent attorneys who remain in private practice. The TQJ have been allocated to a specific technical competence based on their degree and technical expertise.

The UPC continues to appoint new judges, including the latest addition of three new LQJ on 30 April 2024. As a result of the increasing caseload, Judges at several divisions of the Court of First Instance have been appointed or will be appointed in the coming months, including the Central Divisions of Paris and Munich section, and the Local Divisions of Düsseldorf, Munich, and Paris. The working time for judges in the Courts of First Instance and the Court of Appeal is also being increased to reflect the caseload.

The President of the UPC’s Court of Appeal is Mr Klaus Grabinski (DE), a highly experienced and well-known patents judge from the German Federal Court of Justice. The Presiding Judge of the second UPC Appeals panel is Ms Rian Kalden (NL), whose judgments in litigation about standard essential patents and FRAND have been highly influential. The other LQJ at the Court of Appeal are drawn from the German, French, Dutch, Italian and Swedish national patents courts. The TQJ for the Court of Appeal panels has been drawn from the pool of TQJ judges based on technical expertise.

At the Court of First Instance, Ms Florence Butin (FR) a highly experienced patent Judge has been appointed President. Ms Butin oversees the Local, Regional and Central Divisions of the UPC and has been appointed as presiding judge for the Central Division, Paris. Many of the LQJ who have been appointed to the Regional and Local Divisions of the UPC are also very well-known from their role in the national patent courts. The TQJ appointees have been grouped by their technical expertise in biotechnology, chemistry & pharmaceutics, electricity, mechanical engineering, and physics.

The UPC has provided a number of training sessions for all of the Judges on relevant patent law and procedure, as well as use of the UPC’s online case management system. A code of conduct for UPC Judges was decided on 24 April 2023, which requires the Judges to act with independence, integrity, and impartiality, and avoid conflicts of interest.

Yes, because the UPC represents a significant change in the patent landscape for Europe, there will be a transitional period of at least 7 years (possibly to be extended to 14 years) where patentees can apply to opt-out the European patents or patent applications from the UPC’s jurisdiction. The application to opt-out must be made in respect of all the states for which the European patent has been granted or which have been designated in the application. Once opted out, unless the opt-out is withdrawn, the EP will stay opted-out for the life of the patent. The opt-out must be made by the person(s) entitled to be named as the proprietor or applicant on the national or European patent registers, irrespective of whether they are listed on the register(s). If there is more than one proprietor or applicant, then all proprietors / applicants must agree to file the application to opt-out. The opt-out status for EPs is searchable on the UPC’s online case management system and shown on the EPO’s Patent Register. Ultimately, after the transitional period, only EPs that have been opted-out before the end of the transitional phase, EPs in non-UPC countries and those patents directly applied for through the national patent offices will be litigated in the national patent courts.

In the case of published European patent applications, only the person(s) entitled to be the applicant(s) of the European patent application can opt-out the application, whether or not such person is recorded as such in the European patent register.

In the case of granted European patents, only the person(s) entitled to be registered as proprietor(s) under the law of each Contracting Member State in which the EP has been validated can opt-out the patent, whether or not such person is recorded as such in the national patent register.

There is a rebuttable presumption, however, that the applicant(s) shown on the European patent register or proprietor(s) shown on the national patent registers are entitled to be registered as such.

All of the applicant(s) or proprietor(s) entitled to be recorded as such must agree to file the opt-out.

The option to opt-out European patents, patent applications and corresponding supplementary protection certificates from the jurisdiction of the UPC has been available from the start of the Sunrise Period on 1 March 2023. Patents opted-out before the 1 June 2023, were treated as having been opted-out from day 1 of the UPC. It is still possible to opt-out EPs for a transitional period of at least another 7 years following the official start of the UPC on 1 June 2023.

Yes, the UPC’s Opt-Out Register will is searchable.

The UPC Registry also shares data with the EPO and the EPO Register also shows if a European patent or patent application has been opted out.

One of the primary reasons for exercising an opt-out for a European patent, is to avoid an action for a central revocation before the UPC. If a third party considers it likely that an opt-out has not been exercised validly, then it may initiate central revocation proceedings before the UPC’s Central Division.

Patentees have a very short time (less than three months) to put in their defence to a revocation action. They also have one-month to file a preliminary objection against a revocation action being filed. One of the reasons for raising a preliminary objection is that an opt-out was validly made by all person(s) entitled to be the proprietor. The preliminary objection proceedings would have to be supported by detailed submissions and evidence demonstrating that the person(s) entitled to be the proprietor(s) applied to opt-out. If the supporting documentation and analysis of chain of title has not been done during the process of deciding to opt-out the EP, there will be significant time and costs pressure on the business and/or legal team to do this exercise quickly but thoroughly.

If the UPC’s Central Division holds that the opt-out was not validly executed and proceedings are ongoing before the UPC, it is not possible to rectify the error(s) to effect a new opt-out. The revocation proceedings before the UPC will continue through to resolution for the European patents valid and in force in participating EU Member States.

Yes, provided that there has been no litigation in the national courts of participating EU Member States, the opt-out can be withdrawn at any point during the lifetime of the patent. The application to withdraw the opt-out will be ineffective in respect of the patent in question, irrespective of whether the national proceedings are pending or concluded.

In the case of European patent applications that have been opted-out, the opt-out will be deemed withdrawn if a UP is designated on grant.

Yes, our European patent and patent litigation teams can continue to provide strategic advice on prosecution, litigation and licensing on all aspects of the UPC and UP.