The European Unitary Patent and The Unified Patent Court - The Basics
The unitary patent ‘package’ which has been approved by the EU Council and parliament consists of:
The Unitary Patent will be a European patent, granted by the EPO, having ‘unitary effect’ across all of the participating countries. It will be a single, indivisible, right – like a CTM or RCD.
The Unified Patent Court will provide, for the participating countries, a centralised forum for the litigation of European patents, including the new Unitary Patents.
26 out of the 28 EU countries are participating in the unitary patent scheme. These are listed below:
Croatia acceded to the EU on 1 July 2013, after the agreement was signed, and has not yet signed up, but could do so later.
The unitary patent will cover all of the participating countries above that have also ratified the UPC Agreement at the time of requesting the unitary patent. These are known as the Contracting Member States. As at the start of 2019, the countries that have ratified the UPC Agreement are given below. In addition, Germany must ratify the UPC Agreement and so will be covered by the unitary patent when and if it becomes available.
The same 26 countries have agreed to participate in the Agreement on a Unified Patent Court. Decisions of the Unified Patent Court will affect unitary patents and European patents in the countries that have ratified the UPC Agreement (i.e. the Contracting Member States).
Spain has not signed up to the unitary patent package, but in principle they could join at any time.
Countries who are Member States of the EPC, but who are not in the EU (for example, Switzerland and Norway) are not eligible to join the Unitary Patent or Unified Patent Court.
European patents granted by the EPO will still cover these countries, but they will need to be validated, maintained, and enforced separately in each of them, as now.
A European patent application will be filed at the EPO in the usual way.
When the application is granted, the applicant will then be able to choose whether or not the resulting European patent should have ‘unitary effect’ for the Contracting Member States.
It will still be possible, as an alternative to unitary protection, to validate separately in any or all of the Contracting Member States, as now.
The cost of filing and prosecuting the European patent application at the EPO should be the same as at present.
The renewal fees for the unitary patent have been set and are given in the table below. They represent about four times the average renewal fee for a single country.
UP renewal fee proposal (Euro)
UP renewal fee proposal (Euro)
Therefore, for applicants who usually validate their European patents in only a few countries (e.g. only in the UK, France and Germany), the unitary patent may not represent good value.
During a transitional period, there will be a requirement to translate the whole text of the unitary European patent into at least one other language, which will add to the cost.
However, in the long run it is intended that machine translations will make the patent automatically available in all EU languages, and so there will be no need for the patentee to provide any translations.
The transitional period will last until the quality of machine translations is deemed to be good enough for this purpose, up to a maximum of 12 years.
At present, European patents must in principle be litigated separately in each country where they have effect. For example, a decision by a UK court on the validity or infringement of a particular European patent currently has no effect in Germany.
Such ‘parallel’ litigation increases costs for the parties and occasionally results in inconsistent decisions from the different national courts, which is undesirable.
The countries signed up to the Unified Patent Court have all agreed to transfer jurisdiction over European patents and SPCs from their national courts to a single, centralised court.
This should reduce the amount of parallel litigation and increase legal certainty, since decisions on infringement or validity of European patents will be made by a single court and will then have effect in all participating countries.
Any litigation involving the new Unitary Patent will be conducted in the new Unified Patent Court.
Within the Contracting Member States, the Court will also have exclusive competence to decide on matters of infringement and validity relating to ‘classical’ European patents (i.e. not having unitary effect) and also on matters relating to Supplementary Protection Certificates (SPCs) granted on these patents.
So, once the Agreement enters into force, an action for revocation of an EP(UK) patent, for example, will be brought before the Unified Patent Court, not before a UK court. Similarly, an action for infringement of a European patent in Germany will also be brought before the Unified Patent Court.
Decisions of the Unified Patent Court will then have effect across all Contracting Member States.
For a transitional period (initially 7 years, extendable on review) owners of European patents will be able to ‘opt-out’ of the unified system and continue to litigate their European patents in the national courts. Patents which have been “opted out” will stay opted out for their whole term, unless the patentee withdraws their opt out (which they can do at any time).
The national courts in the individual countries will continue to have jurisdiction over national patents, (i.e. granted by the national patent offices, not the EPO).
The first instance Court will be split into local and regional ‘divisions’ (to be set up by the Contracting Member States) as well as a Central Division.
In general, the Central Division will be responsible for most cases relating to validity, whereas infringement actions will generally occur in the local divisions.
The Central Division will be based in London (for Life Sciences and Chemistry subject matter), Paris (for Physics and Materials subject matter) and Munich (for Mechanical and Engineering subject matter).
The Court of Appeal for the Unified Patent Court will be situated in Luxembourg.
The package will come into force when the UK, France and Germany, plus at least ten other participating states have ratified the Agreement. As at the start of 2019, only Germany still needs to ratify the Agreement for the package to come into force.
However, the uncertainty surrounding Brexit as well as an outstanding legal challenge in the German Federal Constitutional Court have delayed ratification by Germany and hence the coming into force of the UPC agreement.
It is therefore now unclear when the package will come into force.
This information is simplified and must not be taken as a definitive statement of the law or practice.