European Union: Unitary Patent And UPC – A Brief Catch-Up

The new provisions concern:

- on the one hand, the jurisdiction of a new court, called the Unified Patent Court, for the settlement of disputes relating to European patents with or without unitary effect;

- on the other hand, the possibility of conferring unitary effect on a European patent granted in the countries participating in the UPC (i.e., the countries that have ratified the international agreement on the UPC - see the list below).

The new provisions do not change the procedure preceding the grant of European patents, i.e., the filing and examination procedure of European patent applications by the European Patent Office (EPO). However, they impose an updating of the protection and litigation strategy in Europe.

The unitary patent

Since January 1^st, 2023, for any European patent application which has been the subject of a notice of intention to grant issued by the EPO (notification under Article 71(3) EPC for which the required formalities - translation of the claims and payment of the grant fee - have not yet been completed), it is possible to obtain a "unitary patent", that is a European patent with unitary effect.

As ofJune 1^st, 2023, the unitary effect will only concern the 17 countries participating in the UPC, namely: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, Germany, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. These 17 UPC countries will also remain accessible through the "classic" national validation procedures as they exist today, it being understood that the unitary effect cannot be combined with national validations in these countries.

For a European patent to confer protection in member countries of the European patent organization that do not (or not yet) participate in the UPC, such as Spain, Norway, the United Kingdom or Switzerland, the "classic" national validation procedure remains the only possible option. Moreover, even in the event of enlargement of the UPC participating countries, the territorial coverage of a unitary patent will not extend beyond its coverage upon registration of the unitary effect.

Some remarks and practical advice:

- on a European scale, the initial territorial coverage of the unitary patent is already vast;

- for a lifetime of around 10 years, the maintenance fees for a unitary patent are typically lower than the maintenance fees for a "classic" European patent validated in at least 4 countries. The unitary patent is therefore likely to be the most cost-effective option if you plan to validate your European patent in more than 4 countries among the 17 UPC countries listed above. The greater the number of countries targeted, the greater the savings;

- The unitary patent is a single (indivisible) legal title. The unitary patent cannot therefore be transferred in part. Nor can it be limited, revoked or abandoned for certain UPC countries. However, you may grant or obtain a license for all or part of the UPC territories;

- the unitary effect precludes opting out of the exclusive competence of the UPC (see below).

The jurisdiction of the UPC

By default, as of June 1^st_, 2023, European patent applications as well as European patents, whether or not having unitary effect, are subject to the exclusive jurisdiction of the UPC. One consequence of this exclusive jurisdiction is that in the event of infringement of a European patent in one or more countries participating in the UPC, an infringement action must be brought before the UPC (it is no longer possible to bring an action before a national court). It also allows any third party to bring an action for revocation of a European patent centrally with the UPC, bearing in mind that the revocation of a European patent by the UPC takes effect in all UPC countries in which the patent is in force. The exclusive competence of the UPC therefore has the consequence of centralizing actions, "in attack" as well as "in defense".

However, it is possible to opt out of, i.e., to derogate from, the competence of the UPC for European patent applications and European patents without unitary effect. These opt-out requests can be submitted from now on.

Some remarks and practical advice:

- the UPC has not taken any decision to date, so it is difficult to anticipate its trends and practices;

- in the case of a decision of the UPC concerning a European patent, whether or not having unitary effect, e.g., a decision to revoke the patent, this decision shall apply to all UPC participating countries covered by the patent. The opt-out therefore prevents the European patent from being revoked simultaneously in several countries;

- in the event of an opt-out, the UPC is no longer competent to initiate infringement proceedings centrally. It may then be necessary to bring a multitude of infringement actions in parallel before several national courts. However, the opt-out can be lifted (so-called "opt-in" procedure) under certain conditions and permanently.