The Unitary Patent System
- what is it about?
In this introduction, you will learn what the unitary patent system is and what the EU’s objectives are with this innovation.
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The European Unitary Patent System
Information & guidance
UPC – what is it all about?
The European Unitary Patent and, in connection with it, the Unified Patent Court (UPC) are expected to become reality on 1 June 2023. With a largely new system for the protection and enforcement of patents in Europe, the harmonization of the patent system in Europe will be further advanced. For the first time, patent protection in Europe will be possible on a cross-border basis, and the jurisdiction for patent matters will also be completely redesigned.
In the following, we provide you with a first guideline in the form of various articles and overviews, with which you can prepare yourself for the introduction of the unitary patent. Of course, this information is no substitute for legal advice and does not claim to be exhaustive. We will therefore be happy to answer any questions you may have in this context in person!
UPC – who is involved?
The European Union has a total of 27 member states.
Currently, 17 EU member states have committed themselves to participate in the European Unitary Patent as well as the European Patent Court from the beginning:
Austria (AT), Belgium (BE), Bulgaria (BG), Germany (DE), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Italy (IT), Latvia (LT), Luxembourg (LU), Latvia (LV), Malta (MT), the Netherlands (NL), Portugal (PT), Sweden (SE) and Slovenia (SI).
It is expected that in the future another 10 EU Member States will participate in the UPC:
Cyprus (CY), Czech Republic (CZ), Spain (ES), Greece (GR), Croatia (HR), Hungary (HU), Ireland (IE), Poland (PL), Romania (RO), and Slovakia (SK).
States in Europe participating in the EPC but not in the UPC:
Albania (AL), Switzerland (CH), United Kingdom (GB), Iceland (IS), Monaco (MC), Macedonia (MK), Norway (NO), Serbia (RS), San Marino (SM) and Turkey (TR).
Non-member states, with which validation agreements or extension agreements are in force:
Morocco (MA), Tunisia (TN), Moldova (MD), Bosnia and Herzegovina (BA), Montenegro (ME) and Cambodia (KH).
Everything you need to know!
The European Unitary Patent
The Unitary Patent System
The roadmap to the unitary patent system
When will the new system enter into force? What steps are still necessary beforehand? You can find answers here.
The Unified Patent Court
Structure and functioning, competences, procedure, costs and reimbursement of costs – all details can be found here!
The Unitary Patent
What has to be taken into account when introducing the unitary patent in the context of drafting patent-related contracts? Does the German patent still have its justification? Learn more here!
Opt-out
With the “opt-out”, a transitional period has been provided within the framework of the new unitary patent system. What to consider and what options you have as a patent proprietor, read here!
Recommended actions
The introduction of the unitary patent system paves ways for taking many different routes towards a European patent strategy. Find out which routes are available!
FAQ
The Unitary Patent System in a nutshell
What exactly is the unitary patent system?
The Unitary Patent system comprises the European Unitary Patent (EP) and the newly established Unified Patent Court (EPC or UPC). The EPC was established by the 25 participating member states and will in future be responsible for questions of infringement and validity of unitary patents and European patents.
Who participates in the Unitary Patent Court (UPC)?
Of the total 27 member states of the European Union, 17 have currently committed to participate in the EPG from the beginning. These are: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Latvia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Slovenia. It is expected that the other 10 member states will also participate in the future.
When does the UPC start its work?
The provisional applicability of the EPC started in January 2022. Since then, preparatory work has been underway, which is expected to be completed with the deposit of Germany’s instrument of ratification mid February 2023. After a subsequent three-month sunrise period, the EPC is expected to become operational on June 1, 2023. The detailed roadmap can be found here.
How is the UPC structured?
The UPC consists of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance comprises a central chamber (with its seat in Paris and a division in Munich) and several local and regional chambers in the contracting member states. The Court of Appeal, like the Registry, has its seat in Luxembourg.
What are the advantages of the unitary patent for patent owners?
With only one application to the European Patent Office (EPO), patent protection can be achieved in up to 25 member states. With the coming into force of the Unified Patent Court, the costs of patent disputes will be reduced, as these can be conducted centrally before the EPC instead of in parallel in different member states. This also means that contradictory rulings by national courts can no longer occur, which benefits the legal certainty of all users.
How to apply for a unitary patent?
As before, a patent application must be filed with the European Patent Office, in accordance with the Convention on the Grant of European Patents (EPC). If a European patent is granted, the patent proprietor must file a request for unitary effect within one month after publication of the grant notice in the European Patent Bulletin.
Do European patent proprietors have to participate in the unitary patent system?
If the proprietor of a conventional European bundle patent makes an opt-out declaration, this patent will no longer fall under the jurisdiction of the EPC. Thus, all litigation concerning this patent will continue to be conducted before the national courts.
The opt out declaration can already be made during the “sunrise period” (January – March 2023) to prevent a central attack on a patent directly after the EPC comes into force. There are no fees for the declaration and it can be withdrawn later. Detailed information on the opt-out option can be found here.
What should patent owners consider before the UPC enters into force?
You should consider whether your European bundle patents should fall under the jurisdiction of the UPC or whether you should opt out. The unitary patent offers opportunities, but also brings risks.
On the one hand, it may possibly save costs, for example, but on the other hand, there is also the risk of a centralized attack, for example. Read more about this in our general recommendations for action. However, the specific decision depends on the individual case and should be explored in a personal discussion.
What are the costs for legal proceedings before the EPG?
The fees for proceedings before the EPG consist of a fixed value and a value dependent on the value of the dispute.
Fixed fees:
– Infringement actions/ actions for a declaration of non-infringement: €11,000.
– Provisional measures/ actions for declaration of invalidity: €11,000
– Actions for annulment: €20,000
– Appeal: 11,000 €
Fees based on value in dispute:
– Infringement actions/ actions for a declaration of non-infringement: 2,500 (amount in dispute up to 500,000 €) – 325,000 € (amount in dispute from 50,000,000€)
– Actions for declaration of non-infringement: max. 20,000 €.
In addition, there are the lawyer’s fees and possibly security deposits have to be deposited. Read more in the article Costs and reimbursement of costs in the new EPG system.
Will patents necessarily have to be enforced before the EPC from April 2023?
During a 7-year transition period (which can be extended to 14 years), owners of European bundle patents can choose where to enforce their patents: centrally, before the UPC, or before the respective national courts. The same applies to opposing parties, who can decide where they want to attack patents with nullity actions. During this 7-year period, there will be “shared jurisdiction” for conventional European bundle patents.
At the end of the transitional period, the UPCwill have exclusive jurisdiction in all participating member states
How expensive is the unitary patent?
Unlike national patents, patent owners pay a uniform renewal fee in EURO to the European Patent Office. The amount of the renewal fees corresponds to the sum of the renewal fees in four countries. Thus, a unitary patent has the potential to save costs, but only if one would otherwise validate the European patent in more than 4 states. The more states one would normally validate and the longer the term, the greater the cost savings from the unitary patent. Read more here.
