Unitary Patent & Unitary Patent Court

Questions and Answers on the Unitary Patent (UP) and the Unitary Patent Court (UPC).
The UPC is the Unified Patent Court. It is a unified system that will complement the current judicial system. In particular, the UPC will have jurisdiction over the validity and infringement of European patents and European patents with unitary effect (or “unitary patents”).

The European patent is the patent that is currently granted in accordance with the provisions of the European Patent Convention (EPC). Once granted, it is transformed into a “bundle” of national patents valid in countries that the proprietor chooses at the time of grant from among those that adhere to the EPC.

On the other hand, the patent with unitary effect is a European patent which, at the time of grant, does not become a “bundle” of national patents, but instead remains “single” and is valid in all the countries that adhere to the Unitary Patent system. It will still be possible to validate the patent in the countries not adhering to the Unitary Patent system, similarly to what is required for European patents.

At the time of grant, the proprietor can choose between a European patent and a unitary patent.

To date, it is not yet possible to apply for unitary patents; the Unitary Patent system will enter into force after the entry into force of the UPC.

Not at present. In fact, some countries, such as Spain, Switzerland, Norway and, from the moment of Brexit, also Great Britain, are excluded from the Unitary Patent, even if for different reasons: for example Spain, despite being part of the European Union (EU), has refused to be part of the Unitary Patent system. This system does not apply to Great Britain that has left the European Union, as well as to Norway and Switzerland, which have never been part of it.
No, the Unified Court is not yet in force. It is highly likely that it will come into effect in the coming months. However, a date has not yet been set.
The Unified Court will have competence to decide on the validity and infringement of all European patents already granted* of all European patent applications not yet granted and, of course, of all European and unitary patents that will be granted after its entry into force.

*Provided the patent application was filed on March 1, 2007 or later.

For unitary patents, the Unified Court will have exclusive jurisdiction. With regard to European patents and European patent applications, national courts will also have jurisdiction for at least a transitional period. Once fully operational, the Unified Court will have exclusive jurisdiction for European patents and European patent applications, limited to the states that adhere to the UPC. National courts will continue to have jurisdiction over national patents and European patents validated in states that do not adhere to the UPC.

Yes, at least in an initial period this is possible. The proprietor of a European patent or patent application can file a request for renunciation, known as an “opt-out”.

The opt-out is a waiver request, a means by which the proprietor of a European patent or patent application can remove them, individually, from the jurisdiction of the Unified Patent Court. In other words, all European patent applications and European patents with a filing date of March 1, 2007 or later will automatically be subject to the jurisdiction of the UPC, unless a waiver request is submitted.

In practice, the opt-out allows you to maintain the current situation and ensure that the possible nullity and infringement of your patent or patent application can only be discussed before a national court.

The opt-out cannot be requested for unitary patents, which will automatically be subject to the exclusive jurisdiction of the Unified Court.

If a proprietor does not submit an opt-out request, his European patent or patent application can be judged by the Unified Court both in terms of validity and infringement. The outcome of this procedure will only have an effect on the states that adhere to the UPC.
You can submit the opt-out in the so-called “sunrise period”, i.e. three months before the UPC enters into force. It can also be presented later (in a transitional period, calculated from the start date of the UPC), provided that there are no ongoing proceedings.
The opt-out, once registered in the UPC Register, will be effective for the entire duration of the European patent application or patent. There is no periodic renewal. However, the proprietor can always change his mind and withdraw the opt-out, i.e. “renounce the waiver”.
Yes. For simplicity it can be said that the proprietor of the European patent or patent application can request the opt-in. Therefore, if the proprietor of a European patent or patent application submits an opt-out request and subsequently changes his mind, he can withdraw the opt-out to restore the jurisdiction of the Unified Court.

Yes, there are limits and the proprietor cannot change their mind again. It is possible to renounce the opt-out only once. If the proprietor of the European patent or patent application revokes the opt-out, they can no longer ask for it in the future.

Another situation in which there is no turning back is one in which legal proceedings in a national court have already begun.

Requests for waiver must be submitted to the UPC register through a special online system which can only be accessed by those who have registered following the established procedures. At present, these procedures have not been defined in all their details.
The proprietor of the European patent (or of the European patent application) can request the opt-out. Given the criticality and in analogy to the practices carried out before the EPO, the waiver request is presented by the European Patent Attorney responsible of the case.
In the event that the European patent or patent application is in the name of two or more proprietors, they will necessarily have to take a single decision. Partial opt-out is not possible.
Clearly, the answer to the question involves carefully examining the license agreement to understand what is expected. In general terms, a licensee (even more so if not exclusive) does not have the right to decide to exclude the European patent from the jurisdiction of the Unified Court. They have to reach a decision with the patent proprietor. It must be a joint decision, as in the case of multiple proprietors.
The opt-out request must be submitted in the name of the actual proprietor, even if different from the proprietor registered at the EPO. The Patent Attorney must therefore make every reasonable effort to trace the actual proprietor, they must be authorized by the latter and must keep all the appropriate documentation. The documentation could be, for example, an official statement or an assignment agreement, even if not registered.

The major criticality to consider concerns the principle by which an SPC follows the European patent on which it is based. Therefore, if the European patent were to be centrally revoked, the SPC would lapse in all UPC member states.

Once again, if the European patent and the SPC were owned by two different entities, they would have to find an agreement and decide whether to give up the UPC or be part of the new system.

Of course, there isn’t only one answer to this question. Considerations, in terms of advantages and disadvantages, change based on a number of factors. It would be difficult to mention them all, but it is necessary to take into account the “strength” of the proprietor (multinational, medium / small company, research institute, …), the company organization, the importance of the patent or package of patents, the technology, license agreements in progress, any relationship with a Standard, doubts related to a new system, and other factors that must be assessed on a case-by-case basis.

The advice for a proprietor of a European patent or a European patent application is not to decide independently, perhaps only on the basis of a comparison of costs. The choice could turn out to be wrong, penalizing and, in some conditions, irreversible. It is risky to make a hasty decision.

The advice is to make the decision after an extensive and broad comparison with your European Patent Attorney who will be able to provide their point of view and the latest information available or legislative news.

In addition to the above, i.e. to discuss with your European Patent Attorney to receive updated and timely information, it is necessary to update the proprietorship of European patents and European patent applications, and to register any changes in the EPO register. If this is no longer possible, it is necessary to provide your European Patent Attorney with all the documentation that allows them, even in a short time, to submit an opt-out request in the name of the effective proprietor.

Marchi & Partners S.r.l. – Via Vittor Pisani, 13 – 20124 Milano – Tel: 02 67076878 – P.Iva: 11663540158 – Privacy Policy & Legal

Marchi & Partners S.r.l. – Via Vittor Pisani, 13
20124 Milano – Tel: 02 67076878
P.Iva: 11663540158 – Privacy Policy & Legal