The proposed European Union package includes two regulations that would 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.
The Unitary Patent regulations specify that they would 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. Now that the UK has left the EU, the UP and UPC preparations are proceeding without the UK.
A Protocol on provisional application (“PPA”) signed on October 1, 2015 would permit some parts of the UPC Agreement to be applied on the day after the UPCA reaches minimum ratification. That would 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.
If implemented, the Unitary Patent would provide patent protection in all participating EU states, and may lower translation and post-grant costs for parties electing to use it. It would be an option for European Patent (“EP”) owners, who would 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, would only be available when the EP is granted with the same set of claims for all participating states. If the UP is elected, it would still be possible to validate national parts in nonparticipating EU states and non-EU states.
If implemented, the Unified Patent Court eventually would 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 would have exclusive competence for Unitary Patents and would 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.
Currently, the necessary ratifications of the original UPCA and protocols are nearly complete. Implementation of the UPC and UP have been delayed by the UK leaving the EU (“Brexit”) and by challenges to German ratification in the German Constitutional Court (Bundesverfassungsgericht).
Although the UK has ratified the UPCA, it left the EU on January 31, 2020 and decided not to seek involvement in the UP/UPC system. Therefore, the remaining participating states have had to address the UPCA 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. Italy has proposed that the part be in Milan. Denmark and Portugal also have shown interest in hosting that part.
German ratification was delayed by two sets of Constitutional Court complaints, the latest of which—filed in December 2020—sought an interim injunction. The German Constitutional Court rejected the interim injunction applications on 9 July 2021, based on findings that the complaints were inadmissible on the merits. That cleared the path for legislation enabling Germany to ratify the Unified Patent Court (UPC) Agreement and its Protocol on Provisional Application (PPA), which came into force on 13 August 2021.
Formal steps toward opening of the UPC and availability of Unitary Patents will start when one more state gives notice of approval of the Protocol on Provisional Application. (At this Update, Slovenia has approved the PPA, but not yet submitted its notice of the approval, and Austria is expected to approve and give notice of its approval soon). Because German ratification will trigger a timeline or approximately four months until opening of the UPC, Germany is expected to postpone actually depositing its ratification of the UPC Agreement until the Preparatory Committee is satisfied that preparations can be completed within those four months.
For details on the status of the UP and UPC, see FAQ 9 on our FAQs page and our Chronology page.