FAQ on the Unitary Patent system

Question 1

What exactly is the unitary patent system?

Accepted Answer

The Unitary Patent system consists of the European Unitary Patent and the Unified Patent Court (UPC). The UPC has jurisdiction over unitary patents and, in many cases, also over European patents. Together, they provide a centralized framework for patent protection, enforcement, and validity challenges across the participating Member States.

Question 2

Who participates in the Unified Patent Court (UPC)?

Accepted Answer

Of the 27 Member States of the European Union, 18 currently participate in the Unified Patent Court (UPC). These are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden. Additional EU Member States may join the system in the future.

Question 3

How is the UPC structured?

Accepted Answer

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.

Question 4

What are the benefits of the Unitary Patent for patent proprietors?

Accepted Answer

With a single request for unitary effect, patent protection can be obtained in all participating Member States of the Unitary Patent system. In addition, patent disputes can be heard centrally before the UPC instead of in parallel proceedings before national courts. This can reduce costs, avoid contradictory decisions, and improve legal certainty.

Question 5

How to apply for a unitary patent?

Accepted Answer

A Unitary Patent can only be obtained on the basis of a European patent granted by the European Patent Office (EPO). After grant, the patent proprietor may request unitary effect within one month of publication of the mention of grant in the European Patent Bulletin. This extends protection to all participating Member States of the Unitary Patent system.

Question 6

Do European patent proprietors have to participate in the unitary patent system?

Accepted Answer

Participation in the Unitary Patent system is not mandatory. Under certain conditions, proprietors of traditional European patents may opt-out of the jurisdiction of the UPC. As a result, disputes concerning these patents remain subject to the jurisdiction of the national courts. No official fee is charged for filing an opt-out declaration.

Detailed information on the opt-out option can be found here.

Question 7

What strategic decisions should patent proprietors make today?

Accepted Answer

Patent proprietors should consider whether their European bundle patents should fall under the jurisdiction of the UPC or whether an opt-out may still be appropriate. The Unitary Patent offers opportunities, but also involves risks. While cost savings may be possible, there is also the risk of a centralized attack. The right strategy depends on the individual case.

Question 8

What are the costs for legal proceedings before the UPC?

Accepted Answer

Court fees before the Unified Patent Court (UPC) consist of fixed fees and, in certain cases, value-based fees. The amount payable depends on the type of action and, where applicable, the value in dispute.

Fixed fees*:
– Infringement actions/ actions for a declaration of non-infringement: €11,000
– Provisional measures/ counterclaims for revocation: €11,000
– Revocation actions: €20,000
– Appeals: €11,000

Value-based fees*:
– 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)
– Counterclaims for revocation: max. €20,000

In addition, attorney fees and security deposits may be incurred. Further information can be found in our article Costs and cost reimbursement in UPC proceedings.
*Court fees are subject to amendments of the applicable UPC fee schedule.

Question 9

Must European patents be enforced before the UPC?

Accepted Answer

No. During the current transitional period, proprietors of European bundle patents may choose whether to enforce their patents before the Unified Patent Court (UPC) or before the respective national courts. The same applies to third parties wishing to challenge European patents through revocation actions. This is commonly referred to as “shared jurisdiction”.

The transitional period is initially set for seven years and may be extended. Once the transitional period ends, the UPC will generally have exclusive jurisdiction over European patents in the participating Member States, unless a valid opt-out has been registered.

Question 10

How expensive is the unitary patent?

Accepted Answer

Unlike national patents, proprietors of a Unitary Patent pay a single renewal fee in euros to the European Patent Office. Whether a Unitary Patent is more cost-effective than traditional validations depends primarily on the number of countries in which protection is sought and the expected lifetime of the patent.

The Unitary Patent may offer cost advantages where a European patent would otherwise need to be validated in several countries. Costs equivalent to maintaining a European patent in four countries are often used as a benchmark for comparison. The greater the number of countries covered and the longer the patent remains in force, the greater the potential cost savings may be. Read more here.

The European Unitary Patent System

UPC – what is it all about?

UPC – who is involved?

The European Unitary Patent

The Unitary Patent System
- an overview

The Unified Patent Court

The Unitary Patent

Opt-out

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