The European Union package includes two regulations that will create a European Patent with unitary effect (“Unitary Patent” or “UP”) and a Unified Patent Court (UPC) Agreement (UPCA—a treaty) that will create a Unified Patent Court. The regulations specify that they will be effective on the same date as the UPCA on the first day of the fourth month after minimum ratification of the UPCA by 13 EU states including France, Germany and the United Kingdom. A Protocol signed on October 1, 2015 will permit some parts of the UPC Agreement to be applied on the day after the UPCA reaches minimum ratification. That will permit organizational activities before the UPCA enters into full force and the court opens, including the recruitment of judges, testing of IT systems and early registration of opt-out demands. Currently, minimum ratification is expected in October-November 2016. The UPC is expected to open and UPs to be available in March 2017.
The Unitary Patent will provide patent protection in all participating EU states, and may lower translation and post-grant costs for parties electing to use it. It will be an option for European Patent (“EP”) owners, who will have the opportunity to validate their EP after grant as either a UP for the participating EU states or conventional national EP parts. The UP, however, will only be available when the EP is granted with the same set of claims for all participating states. If the UP is elected, it will still be possible to validate national parts in nonparticipating EU states and non-EU states.
The Unified Patent Court eventually will handle all litigation involving patents issued by the European Patent Office that are validated in participating EU states, including both the regular, nationally validated European Patents and the new Unitary Patents. During an initial, transitional period of seven years, which may be extended, the UPC will have exclusive competence for Unitary Patents and will share competence for other EPs with the respective national courts. During that period the owner of a conventional EP may opt-out of UPC competence and opt-in again.
For details, see our FAQs page.
Because Spain and Italy were unwilling at that time to give up translation into their languages, the EU package proceeded under the principle of “enhanced cooperation,” which permits a majority of EU states to proceed by agreement when unanimity cannot be achieved. Of the 27 EU member states in 2013, 25 indicated their intent to participate.
Italy initially did not intend to participate in the Unitary Patent, but did sign the UPC Agreement. After four decisions by the Court of Justice of the European Union (“CJEU”), rejecting objections by Spain and Italy to the UP and UPC, Italy sent a letter to the EU Council on July 7, 2015, asking to participate in the UP and on September 30, 2015, the EU Commission announced that Italy had joined the Unitary Patent scheme. (See here and here). Rumors began circulating in Spain in August 2015 that it also was moving toward UP and UPC participation.
Final EU regulations establishing the Unitary Patent and related translation regime, and the final version of the UPC Agreement were published January 11, 2013. The Agreement was signed by all EU states at that time except Spain and Poland.
On January 19, Finland became the ninth state to deposit its ratification. The states that previously reported their ratification are: Austria, Belgium, Denmark, France, Luxembourg, Malta, Portugal and Sweden. The Netherlands has started the ratification process and has posted a draft ratification proposal (in Dutch) online. Implementing legislation was approved by Parliament in the United Kingdom Kingdom on March 1-2, 2016 and the Secretary of State previously has been given authority to ratify the UPCA once enactment of that that legislation is completed. The British government has signed a lease on space to be occupied by the London part of the UPC Central Division and a Local Division. However, a vote on whether to leave the EU (“Brexit”) is expected in the UK on June 23, 2016, so the path to creation of the UP and UPC will not be clear until then. Germany is not expected to deposit its ratification until about November 2016, in part to assure that the UPC is ready to open on the first day of the fourth month after minimum ratification is achieved, when the court must open as provided in the UPCA.
The UPC Preparatory Committee adopted the final version of Rules of Procedure on October 27, 2015. They were subject to future amendments setting the court fees and final approval by the UPC itself, when it is established.
The UPC Preparatory Committee met on February 24-25, 2016 and approved Rules on Court Fees and Recoverable Costs 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. The meeting Report also disclosed adoption of Rules Governing the Registry of the UPC, Rules of Procedures of the Advisory Committee and the Protocol on Privileges and Immunities, and agreement on the level of judicial salaries, but recruitment of judges was postponed.
For more information, please see our EU Official Documents, Resources and FAQs 27-40. See the European Council’s website here for information on the progress of ratifications as they are officially deposited with the Council and reported to the Commission.
Updated March 11, 2016