Unitary Patent & Unitary Patent Court

The UPC is the Unified Patent Court. It is a unified system that complements the national judicial system for matters related to patents. In particular, the UPC has 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 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 is still 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.

No. Some countries, such as Spain, Switzerland, Norway and 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.

Here you can find an updated list of the countries in which the Unitary Patent System is in force: https://www.unified-patent-court.org/en/organisation/upc-member-states

The Unified Patent Court has competence to decide on the validity and infringement of all unitary patents, as well as of all the granted* European patents and of all the pending European patent applications for which an opt-out request has not been filed.

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

For the unitary patents, the Unified Patent Court has exclusive jurisdiction. With regard to European patents and European patent applications, national courts also have jurisdiction for at least a transitional period. Once fully operational, the Unified Patent Court will have exclusive jurisdiction for European patents and European patent applications, limited to the states that adhere to the UPC. National courts 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^st, 2007 or later are automatically subject to the jurisdiction of the UPC, unless a waiver request is submitted.

In practice, the opt-out allows you to 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 are automatically subject to the exclusive jurisdiction of the Unified Patent Court.

If a proprietor does not submit an opt-out request, his European patent or patent application can be judged by the Unified Patent 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.

It is possible to file an opt-out at any time, until the end of the so-called transitional period (7 years from the entry into force of the UPC), as long as 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 Patent 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.

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 Patent 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.