Unitary Patent (UP)
& UnifIed Patent Court (UPC)

After many years of delays, the Unitary Patent (UP) and the Unified Patent Court (UPC) systems will soon enter into force, perhaps already late 2022 or early 2023. This new system provides new options for patent owners.

For comparison, we briefly summarize the current European patent system

Under the current system, national validation of a European patent is required and renewal fees are payable in each country where it is to have effect. Infringement and revocation actions are brought before each national court and the outcome may differ. This makes the current system expensive, but there is a lower risk of revocation of all your patent rights.

The Unitary Patent system

The new Unitary Patent system provides a single, unitary patent that covers all the participating states. Upon grant of a European patent, you will need to decide whether your European patent should become a unitary patent or whether it should be validated nationally in individual participating states in a conventional manner.

National validation under the old system will still have to take place for EU member states which are not yet part of the UP/UPC agreement (e.g. Spain, Poland and Croatia) and for non-EU member states of the European Patent Convention (e.g. Great Britain, Norway and Switzerland).

The Unified Patent Court (UPC) will have jurisdiction over all unitary patents

A single infringement action based on a UP will cover all participating states and a single revocation action against a UP can invalidate the patent in all UPC states.

Use of the UP system often means lower validation and renewal fee costs.
The downside is an increased risk of centralized revocation of the patent.

The UPC will also have jurisdiction over nationally validated European patents

The UPC will also have jurisdiction over European patents validated nationally in the UPC
states – this includes newly granted European patents and existing European patents
granted before the UP/UPC system starts.

Yes, it is possible to remove your European patents from the UPC system

The UPC system has a transitional period of 7 years. During this period, nationally validated European patents can be removed from the jurisdiction of the UPC. This removal is called “opting out”. It is available for existing European patents as well as for newly granted European patents that are validated nationally in UPC member states, but not for unitary patents. Even pending European patent applications can be opted out.

A request for opting out can be filed as long as no court actions have been started before the UPC. Already 3-4 months before the start of the UP/UPC system, you may opt out your existing European patents, thus avoiding the risk that others initiate revocation actions against your existing European patents before the UPC.

Suggested Actions – you should:

  • Urgently review and identify which of your existing European patents you would like to opt out
  • Prepare your strategy to get the most out of new UP/UPC system
  • Contact us with any questions

Member states of the UPC/UP system:

The following European countries are expected to be active member states under the UPC/UP system when it starts: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

Further resources:

Webpage of the Unified Patent Court:
https://www.unified-patent-court.org/

Webpage of the EPO on the Unitary Patent:
https://www.epo.org/law-practice/unitary/unitary-patent.html

Contact us

Please feel free to contact us. Guardian has one of Denmark’s largest and strongest teams of European Patent Attorneys and European Design Attorneys providing expertise in diverse technical fields. Reach out for us for a non-binding conversation.

E-mail: mail@gipc.eu

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