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The proposed 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 would create a Unified Patent Court for at least the 17 participating EU states that will have ratified the UPC Agreement. Preparations for implementing this package are now nearing completion. The Start Date is expected to be early in 2023. (See Status below).
The Unitary Patent
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. There will be no change in the application procedure at the European Patent Office (“EPO”). The Unitary Patent will be an option for European Patent (“EP”) owners, who will be able to either register their EP after grant as a UP for the participating EU states or validate it as national parts of a European Patent (also called a “classic” European Patent). 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 also still be possible to validate national parts of the European Patent in EU states that are not participating in the UPCA and non-EU states that are contracting states to the European Patent Convention (“EPC”) (as well as the EPC extension states and validation states). For more about the Unitary Patent, see our webpages: UP & UPC FAQs, Unitary Patent Costs, and Registration as a Unitary Patent.
The Unified Patent Court
The Unified Patent Court (“UPC”) eventually will handle all infringement and revocation 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 by up to another seven years), the UPC will have exclusive “competence”(jurisdiction) for Unitary Patents and will share competence for EP national parts with the respective national courts. During the transitional period the owner of a conventional EP may opt-out of UPC competence but also may withdraw the opt-out, as long as no action relating to one of the national parts of the patent has been brought before a national court. See our Opt-Out page here.
The UPC will be a single court, with First Instance divisions at the trial level and a Second Instance, Court of Appeals. The First Instance level includes a Central Division, having parts in Munich and Paris, a Regional Division in Stockholm for Sweden and the Baltic states, and Local Divisions in many of the participating states. Germany is the only state that will have more than one Local Division part. They will be in Düsseldorf, Hamburg, Mannheim and Munich. Infringement actions against defendants domiciled in one of the participating states normally will be filed in its Regional or Local Division. Infringement actions involving defendants not domiciled in a state having a Local or Regional Division may be brought in the Central Division. Actions for revocation normally will be heard in the Central Division. Defendants in infringement actions may counterclaim for revocation. If such counterclaims are filed in a Local or Regional Division, the counterclaim may be transferred to the Central Division or an additional, technical judge may be sent to the Local or Regional Division.
In the Central Division, the language of the proceedings normally will be the language in which the patent concerned was granted. A national language will be used in Local Divisions, which may also permit use of other official languages of the EPO. The Regional Division in Stockholm will use only English. The language of proceedings before the Court of Appeal normally will be the language of proceedings before the Court of First Instance or, if the parties agree, the language in which the patent was granted. For more about the UPC, see our webpages: UP & UPC FAQs and Opt-Out from the UPC.
The Participating States
The EU states participating in the Unitary Patent and UPC from the start are identified in blue in the map and tables below. Seven other EU states have signed the UPC Agreement and may participate after they ratify that agreement are identified in green. Poland and Spain have not signed the UPC Agreement and currently do not plan to participate in the UP and UPC. Croatia joined the EU on 1 July 2013, after the UPC Agreement was signed. It could join the UPC-UP arrangement by signing and ratifying the UPC Agreement.
Although the UK ratified the UPC Agreement, it left the EU on 31 January 2020 and later decided not to participate in the UP-UPC system. Therefore, the remaining participating states have had to address the UPC Agreement provisions referring to the UK and to London as the location of a part of the UPC Central Division. Following a decision of the UPC Preparatory Committee in September 2020, it now appears that the UPC will start without replacing the London part and will consider a replacement later. Meanwhile, Central Division cases that would have been assigned to the London part will be assigned to the Munich and Paris parts. Italy has proposed that the third part be in Milan. Denmark and Portugal also have shown interest in hosting that part.
The UPC Agreement specifies that the new court will come into existence on the first day of the fourth month after the minimum required ratifications of the UPC Agreement, called the “Start Date.” The Unitary Patent regulations specify that they would be effective on the same date. After the Agreement was signed, it was realized that the Agreement would not provide authority for the UPC to conduct organizational activities and would not provide sufficient time for organization of the new court before the Start Date. Therefore, a Protocol on provisional application (“PAP”) of portions of the UPC Agreement was adopted, to permit organizational activities before the UPC Agreement enters into full force, including establishment of the Administrative, Budget and Advisory Committees, the recruitment of judges, testing of IT systems and early registration of opt-out demands. The PAP came into effect on 19 January 2022, the day after Austria ratified that protocol.
The diagram below indicates the current timeline to the start of the Unitary Patent and UPC:
As indicated in the diagram, the total period of provisional application of the UPC Agreement was expected to take between seven and twelve months. (Now, it is expected to take a bit longer). That period will be divided in two stages.
The initial state of preparations is now ongoing. The Administrative Committee held its inaugural meeting on 22 February 2022. It adopted its committee Rules of Procedure, the Rules on the European Patent Litigation Certificate and other appropriate qualifications, the Court’s Service and Staff Regulations, as well as its Financial Regulations. It also appointed the members of the Advisory Committee, who have been interviewing candidate judges for the Court. On 8 July 2022, the Administrative Committee met, received a list of proposed judges from the Advisory Committee, adopted the court’s rules and took several other steps, summarized in its report here. As a result, the Rules of Procedure, Table of Fees, Decision for the set-up of local and regional divisions, and other documents adopted by the UPC Administrative Committee have been published here.
The final stage, referred to as the “Sunrise Period,” will begin when the Administrative Committee is satisfied that UPC preparations can be completed within three months. The Committee will then inform the German government, which will deposit its ratification. That will trigger the final timeline to opening of the UPC on the first day of the fourth month after that deposit. For example, if the German ratification is deposited in November 2022, the UPC and UP will start on 1 March 2023, which appears to be the current target date.
During the Sunrise Period, owners of European Patents and applications may file requests at the UPC to opt-out of UPC jurisdiction, effective on the Start Date. Also during the Sunrise Period, owners of pending European Patent applications may file a request at the EPO to delay grant (in order to be eligible for registration as a Unitary Patent) or an early request at the EPO for registration as a Unitary Patent, effective at the later of the Start Date or grant. See our webpage Registration as a Unitary Patent.
For further details on the status of the UP and UPC, see our Chronology page.
Updated 18 July 2022.
July 18, 2022
Unitary Patent and UPC Now Projected to Start in Early 2023
July 14, 2022
Fish Attorneys John Pegram and Jan Zecher Author Managing IP Article "Will a UPC Opt-out Survive the Transitional Period?"
May 12th, 2022 | 1:30 pm EDT
Webinar | Best Practices in European and U.S. Patent Law
April 26th, 2022 | 12:00 pm EDT
New York Intellectual Property Law Association (NYIPLA) Webinar | What You Need to Know About the EU Unitary Patent and Unified Patent Court
February 3rd, 2022 | 9:00 am PST
AIPLA Mid-Winter Institute 2022
July 14, 2021
German Constitutional Court Rejects Requests for Interim Injunctions Against Ratification of UPC Agreement
March 4, 2020
Legal Alert: EU Unified Patent Court and Unitary Patent Update
August 14, 2019
EPO Developments—Summer 2019
August 14, 2019
German Justice Ministry to Await Brexit before Proceeding with UPC
June 28, 2017
Herbert Kunz Interviewed by Metropolitan Corporate Counsel, "What You Need to Know about Patents in Europe"
June 28, 2017
Q&A with Herbert Kunz: What You Need to Know about Patents in Europe
Author: Herbert Kunz, Ph.D.
June 14, 2017
Three Developments Delay UPC Agreement & Unitary Patent
Authors: Herbert Kunz, Ph.D., John F. T. Conroy, Ph.D., John B. Pegram