UPC and 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.

At present, there are at least 16 countries that have ratified the corresponding UPC agreement, pointing to the fact that these countries will be part of the system from the start, with more countries joining all the time.

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 members 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.

It is currently expected to come into force in late 2022 or early 2023, however, the precise date is not yet known.

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 separately in the countries above.

A request for UP protection must be filed within one month of the date of grant. This means that all EPs granted more than one month before the UP system comes into force will not be eligible for unitary protection but will remain classic EPs.

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 the option to withdraw your current EPs from the jurisdiction of the UPC. Although the UPC will eventually have exclusive competence in respect of all EPs in UPC countries, it will be possible to opt out of the system during the transitional seven year period (which may be extended to 14 years). An opt-out can be registered for any patent granted or applied for within said transitional period. 

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 point towards opting out from the UPC system 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 jurisdiction would have the same commercial effect as a pan-European enforcement.

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 patentees will be able to obtain national UK patents through the EPO as they always have done, alongside their UPs or classically validated EPs.

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.