UPC & UP Hub

When it comes into effect, the Unitary Patent (UP) will be a patent that will have effect and will be enforceable across Europe. Although some European countries are not yet participating, the UP will become an alternative to the existing standard European Patent (EP) for many countries and it might be of strategic benefit to own UPs, as well as EPs, which can cover jurisdictions outside of the UP territory.

Unitary Patents will initially provide patent protection in 17 countries. More countries might join the system in future, meaning that Unitary Patents granted in the future will provide correspondingly greater coverage.

You will find guidance and useful information around what to consider for your own strategic approach to the UP system in the UP brochure below.

A traditional EP takes effect in those countries where it is validated after grant. Each of those individual patent rights must then be renewed annually in each of the countries of validation and enforced at the national level, making it a costly overall endeavour. A UP on the other hand takes effect in all participating member states without the need for national validation, meaning there is only one renewal fee to be paid for coverage across the member countries.

However, in the same way that patent protection applies to all of the UP countries, any invalidation action may result in the patent being revoked in all of those countries too.

For more information on what may happen after you have chosen unitary effect for your patents, please refer to our UPC brochure below.  

The UP renewal fees will be equivalent to the renewal fees of the top four countries where EPs were most often validated. This means that if you validate in more than four UPC member countries, you can expect the UP to be more cost-effective than having to pay renewals for each validation of your classic EPs. This is one of many factors to consider when deciding whether to select a UP or not.

For an overview of factors you should consider with regard to UP protection, please refer to our UP brochure.

The UPC is a new pan-European patent court that will have exclusive jurisdiction over patents granted by the European Patent Office (EPO) for UPC countries, including infringement and validity actions. This will apply to all previously granted and newly granted EPs. All UPs will fall under this exclusive jurisdiction and this will also eventually apply to all classically validated EPs. There is, however, a transitional period of at least seven years within which it will be possible to ‘opt out’ classically validated EPs from the jurisdiction of the UPC.

For more information on the opt-out option, please refer to our UPC brochure.

The start date for the Unified Patent Court will be 1 June 2023. This will also be the date on which the Unitary Patent system comes into effect. The “sunrise period”, allowing early registration of opt-outs before the UPC comes into existence has now begun.

Some countries are not yet participating in the UP system, including Ireland, Hungary, Romania, Croatia and Spain. Non-EU member states cannot participate in the UP system so the UP will not extend to Iceland, Norway, Switzerland, Turkey and, of course, the United Kingdom which has withdrawn from the UP system due to Brexit.

However, you will be able to obtain patent protection in these countries by validating your patent as a classic EP.

Any existing EPs which have already been validated as “classic” EPs will remain as such and cannot be converted into Unitary Patents.

Currently-pending EPs, including EPs which have received a notification of intention to grant but which have not yet been formally granted, may be eligible for validation either as a Unitary Patent or as a classic EP. A request for validation as a UP must be filed within one month of the date of grant. This means that EPs granted more than one month before the UP system comes into force, i.e. EPs granted earlier than 1 May 2023, will not be eligible for unitary protection. However, if you have received a notification of intention to grant from the EPO and you have not yet approved the text intended for grant, you may be able to delay grant until after this date in order to make the patent eligible for unitary effect. For more information on delaying grant, please contact us.

Classic EPs, including those granted before the new system enters into force, will fall under the jurisdiction of the UPC by default. However, with respect to the jurisdiction of the UPC, you can decide within a transitional period of at least seven years to opt out your classic EPs. Should you choose to opt out, national courts will retain competence for your patents. Such decision can and should of course be taken on a case by case basis, i.e. you may choose to opt out some of your EPs, while deciding that others should fall under the competence of the UPC by not opting them out.

For guidance on which part of your EP portfolio should fall under the UPC’s competence and which might be better served by opting out, please refer to our UPC brochure.

In addition, our UPC consulting team is happy to assist you with your portfolio review and the strategic decisions to be made.

An opt-out is a request to withdraw an EP from the jurisdiction of the UPC. Although the UPC will eventually have exclusive competence in respect of all EPs in UPC countries, it is possible to opt out of the system during a transitional seven year period, which will run from 1 June 2023 until 1 June 2030. This may be extended to 14 years, i.e. to 1 June 2037. During this time, opt-outs can be registered for classic EPs and for pending European patent applications. A “sunrise period” also allows opt-outs to be registered now, in advance of the formal start of the transitional period. However, patents which have been validated as UPs cannot be opted out.

Once opted out, the patent or application will be subject only to the jurisdiction of the national courts and not to the UPC. The opt-out lasts for the lifetime of the patent unless withdrawn by the patentee. If you do not opt out, the EP will fall automatically into the UPC system.

Please note that there are many factors to be taken into consideration when deciding whether to opt out.  While we have listed these considerations in questions below, we have also summarised them in the opt-out brochure below.

Some of the factors may apply to your portfolio more than others; some may not be relevant to you at all. Each patent proprietor’s situation is unique and these considerations can easily turn into a complex analysis based on your individual situation, the complexity of your portfolio and overall market situation. Our dedicated UPC team is happy to assist in all UP and UPC related matters.

Factors that could point towards opting out from the UPC system might include:

• This is a key patent protecting an important product and is therefore likely to be asserted or have its validity challenged.
• The patent is fundamental to a particular technology area.
• The patent has been monetised (e.g. there are licences or liens against the patent or it is relied upon for investment) and so is of key importance to your business.
• You are aware or suspect that the patent is vulnerable to a validity attack.
• The patent, or closely related patents, have been opposed at the EPO.
• Litigation is common in your industry or technical area.
• You have concerns about the quality or consistency of decisions in the new court.
• You wish to make it harder for competitors to clear the way to enable launch of their product across the whole of Europe.
• Enforcement in one national jurisdiction would have the same commercial effect as a pan-European enforcement through the UPC.

Some of the key reasons you might want to allow your patent to remain opted in to the UPC system include:

• You are aware of one or more potential infringers in multiple territories across Europe against whom you may wish to bring an infringement action.
• You wish to provide a bigger disincentive to infringers who will be aware of the possibility of pan-European action, including injunctions and damages.
• The patent is considered to be strong, with few concerns over validity, in particular if the patent has survived an opposition at the EPO.
• The invention covered by the patent is not currently implemented in a product and hence is unlikely to be asserted or have its validity challenged; or the patent is one of a portfolio of patents of roughly equal value to your business.
• There is a low risk of invalidity actions against the patent due to invalidity actions being uncommon in your field or within the group of competitors.
• To prevent competitors from blocking you opting in by launching a national court action against the patent.
• To access cheaper litigation options: Pan-European litigation in a single UPC action will be cheaper than litigating in multiple separate European countries. This may be particularly important for patents protecting low value products.
• The patent is directed to a process invention. Unlike some European countries, the UPC has a discovery process, and therefore may be particularly suitable for litigating process patents. Moreover, the UPC might be able to grant relief if the individual process steps are conducted in different European countries.
• You wish to try out the new court and influence its development, for example by helping to frame its precedents and procedures.

As the UK is no longer part of the European Union, the UK will not be part of either of these systems. This means that a UP will not provide patent protection in the UK, and the UPC will not have direct jurisdiction over patents validated in the UK.

However, this does not have any effect on the UK’s membership of the European Patent Convention and EPO. Patentees will still be able to obtain patent protection in the UK through the EPO as they always have done.

Due to our established presence in the UK and the EU, as well as our unique combination of competencies across our widely qualified patent attorneys in collaboration with our in-house Mathys & Squire Consulting team, we are well placed and fully prepared to advise and support you in carving out your strategy, as well as providing support for any litigation nationally and before the UPC.

SPCs which come into effect after the UPC Agreement comes into force will fall under the UPC’s jurisdiction as long as they are based on Unitary Patents or European Patents which have not been opted out. At present it is unclear whether SPCs will also fall under the UPC’s jurisdiction if they are based on European Patents which expired before the UPCA comes into force (which would be the case for any SPC already in effect when the UPCA comes into force). SPC holders who are averse to the prospect of centralised revocation through the UPC may wish to take a precautionary approach and attempt to lodge opt-outs in respect of the patents underlying such SPCs in order to opt the SPCs out of the UPC’s jurisdiction.