EU Unitary Patent & UPC: Frequently Asked Questions…and Unofficial Answers!
This page provides our unofficial answers to Frequently Asked Questions (FAQs) about the European Union’s Unitary Patent and Unified Patent Court proposals that are now in the process of approval by the EU member states. Our answers are based on information available on the “Last Updated” date at the end of this page.
The EU Patent Package
What is the EU Patent Package?
What is the Connection that Makes This a Package?
Will this Package be Effective Throughout the EU?
Could an EU Member State That Does Not Initially Sign and Ratify the UPC Agreement, Join In Later?
Can non-EU members of the EPO, such as Norway, Switzerland and Turkey, participate in the Unitary Patent and the Unitary Patent Court?
How soon could the package take effect?
The EU Unitary Patent Regulation
What is the EU Unitary Patent Regulation?
What is the Unitary Patent?
What is the EPO’s role?
How will EPO handing of Unitary Patent matters be implemented?
How do I file an Application for a Unitary Patent?
What is the effect on applications now pending or filed in the EPO before the Unitary Patent regulation becomes effective?
Can I add EU countries to my EU Unitary patent if they ratify after my patent is granted?
Why will the EU Unitary Patent only include some EU states?
Will the Unitary Patent be effective outside the EU?
How will the EU Unitary Patent costs compare with national patents?
Will I be able to validate a Unitary Patent for only a few countries, to save costs?
Will I have to pay annual maintenance fees to each of the participating member states to keep my Unitary Patent in force?
What will be the amounts of the annual maintenance fees?
Will I be able to cancel Unitary Patent coverage is some states, to reduce annual maintenance fees?
The EU Unitary Patent Translation Regulation
The Unified Patent Court
What is the EU Unified Patent Court Agreement?
What will be the UPC’s jurisdiction?
What are the main parts of the Unified Patent Court?
What is the Central Division?
Where is the Central Division located?
What are the Local Divisions?
What are the Regional Divisions?
Can Local and Regional Divisions also decide on validity cases?
Where will the Appeals Court be located?
What Will Be the Role of the Court of Justice of the European Union (CJEU)?
Who will the Judges Be?
Who will Represent the Parties?
How Will the UPC Be Governed?
How Will the UPC Be Funded and Will There Be Court Fees?
What are the Potential Obstacles to the Unitary Patent and Unified Patent Court?
What are the Ratification Issues?
Is There Litigation About These Package?
What if the ratification minimum is not reached or the proposals are blocked by the CJEU decision?
The Basics – Today
The European Patent Office (EPO) is a part of the European Patent Organization (EPOrg), created by the European Patent Convention (EPC), to accept and examine patent applications on behalf of member states and issue European Patents. The EPO is not an agency of the European Union (EU), because it was created by a separate treaty, and has both EU and non-EU member states.
2. What is a European Patent?
The European Patent is a document granted by the European Patent Office (EPO), which the member states have agreed (in the EPC) can be validated, maintained and enforced as national patents in the EPC contracting states.
Yes. National patents can be obtained in Europe in the traditional way, by filing and prosecuting national patent applications in national patent offices, and can be enforced in national courts. That method of patenting and enforcement will not be affected by the new EU patent package.
The EU Patent Package
The EU patent package consists of two EU regulations (laws) and a new agreement (treaty), which were approved by the EU Parliament and Council in December 2012:
- EU Regulation 1257/12 will create a single “European Patent with unitary effect” (Unitary Patent) for a majority of EU member states;
- EU Regulation 1260/12 provides the translation arrangements for Unitary Patents; and
- The Unified Patent Court (UPC) Agreement, EU Document 16351/12 of Jan. 11, 2013, will create a single, Unified Patent Court system for litigation in the participating states of both classical European Patents and those having unitary effect.
The Unitary Patent regulations, which have been fully approved, provide that they will come into effect on the same date as the UPC Agreement (UPCA).
The package will be effective only for states that ratify the UPC Agreement. Spain and Italy did not support the package, primarily because translation into their national languages would not be required, and Poland took a wait-and-see attitude. Therefore, the package is proceeded on the basis of “enhanced cooperation,” a provision of EU treaties that permits a majority of EU states to proceed by agreement when unanimity cannot be attained. On September 30, 2015 the EU Commission announced that Italy, which had signed the UPC Agreement (but has not yet ratified it) has joined the Unitary Patent scheme. See our Chronology page.
Yes. That possibility will remain open to all EU member states, including those that do not initially sign or ratify, and any new EU members. Spain, which raised the most objections to the UP and UPC, now appears to be moving toward joining.
No. The Unitary Patent right is being created by European Union regulation, only for EU states. While the Court of Justice of the European Union (CJEU) indicated in Opinion No. 1/09 in 2011 that a new patent court for less than all EU members would be permissible in principle, it also ruled that participation in a patent court by non-EU states would be inconsistent with EU treaties.
As a practical matter, the effective date is likely to depend on completion of the minimum ratification of the UPCA (second bullet point above). The UPC Preparatory Committee announced signing of a Protocol allowing some parts of the UPC Agreement to be applied early, including the recruitment of judges, testing of IT systems and early registration of opt-out demands.
The announcement also indicated the target date for UPC opening is “at the start of 2017.” (See also Ratification Issues at FAQ 42 below).
The EU Unitary Patent Regulation
It is European Union regulation No. 1257/12 of Dec. 17, 2017, a law that will permit the European Patent Office (EPO) to issue a single, “unitary European Patent with unitary effect” (Unitary Patent) for 13 or more participating EU states, which must include France, Germany and the United Kingdom.
“Unitary Patent” is the short name for a “European Patent with unitary effect. “It will be a European Patent granted by the EPO under the rules and procedures of the European Patent Convention, which the patent applicant requests be given unitary effect for the territory of all EU member states participating in the Unitary Patent system at the time of grant of a European Patent.The Unitary Patent will co-exist with traditional national patents and with classical European Patents. Patent applicants will be able to choose to validate European Patents in various combinations of classical European Patents and Unitary Patents, for example:
- A Unitary Patent for the EU member states that participate in the Unitary Patent system at the time of European Patent grant plus classical validation of a European Patent in any combination of EU member states that are not participating in the Unitary Patent system at that time and non-EU EPC contracting states, which cannot participate in the system; or
- Only a European Patent, classically validated as national patents in the EPC contracting states selected by the applicant.
Up to grant of a European Patent, the EPO will have the same role it has now. After the effective date, European Patent applicants will be able to choose at the time of grant whether to obtain an EU Unitary Patent for the EU states that have ratified the Unified Patent Court Agreement (UPCA) or one or more national patents for those states. If an applicant elects validation as a Unitary Patent, the EPO will have additional tasks that would be performed by national patent offices in connection with classical European Patents and national patents. In particular, the Unitary Patent regulation provides that the participating member states will entrust the following tasks to the EPO, to be carried out by the EPO on the basis of the internal rules of the EPO:
- Receiving and examining requests for unitary effect;
- Registering unitary effect;
- Publishing any required translations during the transitional period;
- Setting up and maintaining a new “Register for Unitary Patent protection,” containing entries on assignment, transfer, lapse, licensing, limitation or revocation of Unitary Patents;
- Collecting annual maintenance fees for Unitary Patents;
- Distributing part of the annual fees to the participating member states; and
- Administering a compensation scheme for reimbursement of translation costs (up to a ceiling) for certain applicants filing applications in an official language of the European Union other than the official EPO languages (English, French and German).
The EU member states participating in the Unitary Patent system have set up a “Select Committee” of the Administrative Council of the European Patent Organization (EPOrg, the umbrella organization including the EPO) to adopt the necessary legal and financial framework. The implementing rules will be based on the existing rules and procedures under the European Patent Convention.
File a conventional application for a European Patent. No separate or different application is required. The decision of whether or not to obtain a Unitary Patent will be made at the time of grant of a European Patent.
European Patent applicants will be able to validate European patents as Unitary Patents after the Unitary Patent system is in effect, at least those based on applications filed after 1 March 2007 that are pending when the system becomes effective. (Applicants desiring a Unitary Patent may want to delay prosecution of applications filed within that period until the UP system takes effect so that grant of European Patents occurs after the effective date and a Unitary Patent can be elected).It had been intended that the Unitary Patent option would be available for election in all applications for European that are pending when the UP system starts; however, a potential problem has arisen. Article 3 of the Unitary Patent Regulation provides “A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States.…” Apparently, the drafters did not consider the possibility of grant of a European Patent after the UP system comes into force, for less than all states that might participate in the UP system. Normally, an European Patent application is treated as a designation for all EPO contracting states at the time of filing. But what if a country joins the EPO after an application is filed? It is not a designated state and cannot be designated because it was not a member at the date of filing. Malta is an EU member state that joined the EPO on March 1, 2007. It has signed and ratified the UPC Agreement (UPCA). No Unitary Patent can be issued on an application filed before March 1, 2007. Croatia joined the EPO January 1, 2008 and has recently joined the EU. It has not yet signed the UPCA. But after it signs and ratifies the UPC Agreement, no patent applications filed before 2008 will qualify for unitary protection.
No. Validation as a Unitary Patent will be available only at the time of European Patent grant. Protection in other EU countries and non-EU members of the EPO can only be obtained by national patent validation at the time of European Patent grant or by separate national patent applications.
The EU treaties normally require unanimity for the EU to adopt a EU patent law, but permit a group of member states to create a single patent by agreement (treaty) under a procedure called “enhanced cooperation.” Spain and Italy initially did not agree to the EU-wide patent granting and enforcement proposals, primarily because the proposals did not require translations into their languages, primarily for internal political reasons. Because unanimity could not be achieved, the other 25 EU member states at that time proceeded have without them. The UP and UPC system will come into effect a few months after 13 EU states, including France, Germany and the UK have deposited their instruments of ratification. Therefore, initially, there probably will be only 13 participating states, with more likely to join later (See also Ratification issues below).
Originally, there was a proposal for a Unitary Patent and a patent court for all states of the EU and other interested, contracting states of the EPC. That proposal was rejected by the Court of Justice of the European Union (CJEU) as inconsistent with the EU treaties. As a result, the current package is limited to EU member states.
The three principal patent cost components are prosecution and validation, translation and renewal fees. Because the Unitary Patent (UP) is a European Patent (EP), the prosecution costs will be the same as a conventional EP. There will not be any fee for validation as a UP. A translation into one other language will be required.
The level of renewal fees probably will be a major factor in deciding whether to validate an EP as a UP or as national patents. The UP renewal fee schedule was tentatively set by the Select Committee in June 2015, before Italy joined the UP scheme and has not been increased as a result of Italy joining. It provides fee levels corresponding to the equivalent of the renewal fees which would be paid for France, Germany, the Netherlands and the United Kingdom. For details, see our Unitary Patent Costs page here.
No. If validation as a Unitary Patent is elected at the time of grant of a European Patent, it will be for all of those EU states that have ratified at that time, no more and no less.
No. There only will be a single EU annuity for a Unitary Patent, paid to the EPO.
The UP renewal fee schedule was set by the Select Committee in June 2015,before Italy joined the UP scheme and has not been increased as a result of Italy joining. It provides fee levels corresponding to the sum of the renewal fees which would be paid for France, Germany, the Netherlands and the United Kingdom. See our Costs page here.
No. A current practice of some companies, which discontinue patent coverage in some states after a few years to save on annual maintenance fees, will not be possible if they elect a Unitary Patent. The inability to selectively abandon a Unitary Patent (because it is unitary) in some states, to save costs, will be one consideration in deciding whether to validate a European Patent as a Unitary Patent or as a group of national patents.
The EU Unitary Patent Translation Regulation
Translations are a major part of patenting costs in Europe, and an obstacle to obtaining protection throughout the European Union. The Unitary Patent translation regulation recognizes English as the principal language and eliminates most existing, applicant-funded translation requirements during an initial, transitional period of up to 12 years. Eventually, translations will be unnecessary, except possibly in the case of litigation.
During a transitional period of up to 12 years, only one translation will be required in connection with Unitary Patent validation:
- where the language of proceedings at the European Patent Office (EPO) is French or German, the patent proprietor will have to provide a translation of the European Patent into English; and
- where the language of proceedings at the EPO is English, the patent proprietor will have to provide a translation of the European Patent into any official language of the European Union.
After the transitional period, the plan is to rely on publication of the patent description in one of the EPO’s working languages (English, French and German), the existing practice of translating the claims into those three languages, and machine translations into the languages of all EU members of the EPO. The EPO has launched “Patent Translate,” a machine translation program developed with Google, and it is expected that no applicant translations will be required when machine translations become sufficiently accurate. According to the EPO, “Patent translate” offers free online access, for information purposes, to automatic machine translations of any European Patent application or patent. Patent Translate is now complete and covers translations between English and 31 other languages. Translation from and into French and German is also available for 27 of these languages. In case of European patent litigation, at the request of a court or an alleged infringer, the patent proprietor will be required to provide a full human translation into the relevant language.
The Unified Patent Court
It is an agreement (treaty) by almost all of the 27 European Union member states that will create a single Unified Patent Court (UPC) system for participating EU states, to handle European Patent infringement and validity cases.
Eventually, the UPC will have exclusive jurisdiction for litigation involving both classical European Patents and Unitary Patents in the participating states. During a seven year transitional period (and possibly for a longer period), however, there will be some possibilities for owners of classical European Patents (but not Unitary Patents) to opt-out of the UPC and choose an alternative, national forum. (See our opt-out page here).
The UPC will have jurisdiction to hear:
- actions for infringement of patents and of supplementary protection certificates;
- counterclaims for revocation;
- revocation actions;
- actions for provisional and protective measures and injunctions; and
- actions against decisions of the EPO relating to Unitary Patents.
The Unified Patent Court will be a Court of First Instance having a central division, and local and regional divisions, and a Court of Appeals.
It is a division of the Court of First Instance that will have general jurisdiction, including jurisdiction over parties not resident in Europe. The Central Division can take decisions on infringement and validity in unified proceedings.
As a result of a compromise in June, 2012, Central Division cases will be allocated by technology (according to EPO classification) to judges sitting in three different locations. The Central Division headquarters will be in Paris and the judges sitting there will handle cases in most technologies. The London branch will handle medical device and pharmaceutical cases. A branch in Munich will handle cases primarily relating to mechanical engineering.
Local Divisions will be established in EU Contracting Member States upon request. An additional local divisions shall be set up in a Contracting Member State upon its request for every one hundred patent cases per calendar year that have been commenced in that Contracting Member State during three successive years prior to or subsequent to the date of entry into force of this Agreement. The Local Divisions will have jurisdiction to handle European Patent infringement actions instead of the Central Division. An action can be brought before a Local Division hosted by a member state where the actual or threatened infringement has occurred or may occur, or where the defendant has its residence.
Regional Divisions may be established by at least two Contracting Member States instead of Local Divisions, at the request of those states. They will have jurisdiction similar to that of local divisions.
If the defendant files an invalidation action, a local or regional division has the discretion either to (a) proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate from the Pool of Judges a technically qualified judge with qualifications and experience in the field of technology concerned, (b) refer the counterclaim for revocation for decision to the central division, and suspend or proceed with the action for infringement; or (c) with the agreement of the parties, refer the case for decision to the central division.
34a. What languages will be used in the UPC?
UPCA Article 49 governs the language of proceedings at the Court of First Instance.
The default provision for cases at the Central Division is to use the language in which the patent concerned was granted.
The default provision for cases at any Local or Regional Division is one or more official language(s) of Contracting Member State(s) participating in the division, designated by the participating state(s). However, those states also may designate one or more of the official languages of the European Patent Office (English, French or German) for use in their local or regional division.
If the parties in a Local or Regional Division case and the competent panel agree, the language in which the patent was granted may be used as the language of proceedings. If the panel does not approve the parties’ choice, the parties may request that the case be referred to the Central Division. The President of the Court of First Instance also has authority to require the use of the language in which the patent was granted, at the request of one of the parties and after having heard the other parties and the competent panel.
UPCA Article 50 provides that the language of cases before the Court of Appeal normally shall be the language of proceedings before the Court of First Instance; however, the parties may agree on the use of the language in which the patent was granted as the language of proceedings or, with the agreement of the parties, the Court of Appeal may decide to use another official language of a Contracting Member State for all or part of the case. As a practical matter, it appears likely that most of the UPC proceedings will be conducted in English because a majority of European Patents are granted in English, because the common language of the judges on the panels (which must be multinational) is likely to be English and because many Contracting Member State(s) participating in Local or Regional Divisions have announced that their division will permit or require the use of English. For example, Estonia, Latvia, Lithuania and Sweden have agreed to create a Nordic-Baltic Regional Division in which the sole language will be English; and Belgium has said it would permit use of its three national languages and English in its Local Division. It is not yet clear whether some or all of the German Local Divisions will permit use of English.
The Appeals Court will be located in Luxembourg.
The CJEU is the final arbiter of EU law. Like the courts of EU member states, the UPC will have authority to refer questions of EU law requiring interpretation to the CJEU for a preliminary ruling. However, efforts were taken in drafting the Unitary Patent regulations and UPC Agreement to minimize the need to involve the CJEU and there is no provision for appeals to the CJEU. That apparently was due to concerns over potential delays in the CJEU reaching a final decision and the fact that, unlike—for example—the U.S. Supreme Court, the CJEU does not have experience or precedents in patent law.
Interestingly, in the recent cases involving attacks on the UP and UPC proposals, the CJEU took care to point out that the European Patent Convention and the Unified Court Agreement are separate agreements of participating states to which the EU itself is not a party.
The UPC will be made up of internationally composed panels, with legally qualified judges and technically qualified judges. The judges will be appointed by a committee of the participating states, on the basis of a list prepared by an independent committee of patent practitioners. There were a large number of indications of interest in being a UPC judge from qualified persons. Some were identified as already highly qualified to serve as judges and others were designated for further training. A group of candidate judges has completed the first two training modules and will next serve internships in Europe’s most specialized patent courts.
Representation will be by either
- lawyers authorized to practice before national courts; or
- European Patent Attorneys with appropriate qualifications.
The UPC will be governed by and in accordance with the UPC Agreement (UPCA) and Rules of Procedure. An Administrative Committee, created by the UPCA, may revise the Agreement to improve the functioning of the court, based on user consultation and an opinion of the court. Preparations for establishment of the UPC by a Preparatory Committee of the participating states are proceeding in parallel with ratification of the UPCA.
Draft rules for the UPC have been in preparation for several years. Now, the Preparatory Committee expects to agree on a final set of UPC Rules of Procedure at its meeting in October, 2015. The Committee issued the 17th Draft of the on 31 October 2014 (Copy here). This draft was issued by the Legal Group of the official Preparatory Committee itself. Earlier drafts were produced by an advisory Experts Group. The 17th draft is in mark-up form, showing the amendments by the Expert Group as a result of the written consultation in red (16th draft) and amendments made by the Legal Group in blue. The Committee also published a table (here), comparing the 16th and 17th drafts, and including the explanatory notes to the changes. A copy of a 18th draft prior to consideration at the committee’s June 2015 meeting has been circulated unofficially (copy here).
A link to the Unified Patent Court webpage of the Preparatory Committee is here.
The operation of the UPC will be funded entirely by court fees, although participating member states are expected to pay at least some of initial costs for establishing the court. It is expected that there will be both fixed based fees and, for certain actions, an additional value based fee, similar to the system in Germany. On February 25, 2016, the UPC Preparatory Committee approved publication of “Rules on Court fees and recoverable costs” with a proposed “scale of recoverable cost ceilings,” and related Guidelines. It decided that there will be no fee to opt-out of the UPC, contrary to an earlier plan for a €80 opt-out fee. These rules are final, “subject to legal scrubbing” and adoption by the UPC Administrative Committee when it is established.
Although earlier proposals had included a €80 fee to opt-out of UPC jurisdiction over a conventional EP, the final fee rules do not impose an opt-out fee.
There have been three principal, potential obstacles: litigation seeking to block one or all parts of the package, failure of ratification, and the possibility that the UK will leave the EU. Now, the litigation obstacle has been overcome and most ratification obstacles appear to be fading away, but the UK “Brexit” vote on June 23, 2016 casts doubt on whether the current proposal can proceed. (See FAQs 43-45).
As discussed above, the Unitary Patent regulations will not be effective until “minimum ratification” of the Unified Patent Court (UPC) Agreement. Minimum ratification requires ratification by 13 of the 27 EU member states, which must include France, Germany and the United Kingdom. That should not be difficult. France overcame its reservations a few years ago and has already ratified the UPCA. By mid-2016, ten participating states, including France had ratified. Additional ratifications by Germany, the United Kingdom and one other state are required to start the start-up procedures envisioned by the Protocol and the period of approximately three to four months until opening of the UPC and grant of UPs begins.
The nonbinding UK Referendum on June 23, 2016, in which 51.9% of voters favored leaving the EU (“Brexit”), has delayed UK ratification. The UK could ratify while it remains an EU member and negotiate to continue UPC participation if it moves ahead with leaving the EU. The UK IP Minister indicated on June 29th that a decision on ratifying the UPC Agreement must await choice of a new Prime Minister, expected in September. Only one further action by Parliament appears to be necessary, because it approved implementing legislation on March 1-2, 2016, the Secretary of State previously has been given authority to ratify the UPCA once enactment of that legislation is completed. It appears, however, that a Parliament would have to adopt a Statutory Instrument in order to ratify the second UPCA Protocol, on Privileges and Immunities. The UK also has signed a lease for space to be occupied by the London Part of the UPC Central Division and a Local Division. Germany has not been expected to complete ratification until a 4-5 months before the UPC is ready to begin work, as part of the plan to manage the court’s start date. Of course, the UK Brexit vote may affect Germany’s willingness to ratify, even if the UK ratifies.
Another complication, which may be delaying some ratifications, is that revisions of some national laws are required. For example, many of the judicial positions will be part-time, but current laws in some of the participating states do not permit their judges to do other work.
See the European Council’s website here and our Chronology page for information on the progress of ratifications.
Yes, there was litigation, but it was concluded by May 2015.
The decision of the Court of Justice of the European Union (CJEU) in Opinion No. 1/09 in 2011 prevented adoption of a broader package that would have included non-EU states, primarily on the ground that the CJEU must have jurisdiction over EU law questions. (Following the Brexit vote, some people believe that the UK could join the UPC before leaving the EU and remain in the UPC after leaving, because it would have consented to such CJEU jurisdiction in signing and ratifying the UPC Agreement, and could agree to be bound by that agreement when leaving the EU).
Four other cases that sought to block the UP and UPC were dismissed by the Court of CJEU. In the first two of those cases, filed in 2011, Spain and Italy each sued to block the UP & UPC proposals (Case Nos. 274/11 and 295/11). The principal question was whether 25 EU member countries may implement enhanced cooperation in the area of the creation of Unitary Patent protection without Spain and Italy. The CJEU issued its judgment on April 16, 2013, firmly rejecting all of the objections raised in those cases. In March, 2013, Spain brought two further cases (Case Nos. C-146/13 and C-147/13) before the CJEU, challenging the EU regulations establishing the Unitary Patent system and its translation regime, respectively. An Advocate General of the CJEU issued his advisory opinion on 18 November 2014, rejecting Spain’s arguments and recommending that the CJEU dismiss the cases. On 5 May 2015, the CJEU issued its judgments, firmly rejecting Spain’s arguments and dismissing those cases.
On 2 April 2015, a case was filed in Belgium’s Constitutional Court challenging that country’s ratification of the UPC Agreement was announced by a long-time campaigner against software patents in Europe. The primary legal ground appears to be discrimination against Dutch speakers in Belgium. That case appears to have been dismissed.
The Unitary Patent and Unified Patent Court proposals are a package; therefore, neither can come into effect until the UPC Agreement’s minimum ratification requirements are satisfied.
Currently, ratification by the UK is required and the UPCA designates London as a seat of part of the UPC Central Division. Therefore, if the UK does not ratify the UPCA while an EU member, revision of the UPCA would become necessary.
The CJEU rejected all of Spain’s and Italy’s litigation attacks on the UP regulations and the UPC Agreement; therefore, those cases are no longer potential obstacles. See FAQ 43.
Updated July 12, 2016.