European Union: The Impact Of The European Unified Patent Court On Filing Strategies

Europe is on the verge of implementing its new Patent System (expected May 2017) with a Unitary Patent and Unified Patent Court (UPC), under which the EU would allow for grant of a unitary patent under the rules and procedures of the European Patent Convention. The new system will provide patent holders with EU-wide injunctive relief (in participating member states); it will also raise the specter of infringement risk in Europe. To best prepare for the new system, companies with patent positions in Europe need to closely examine their filing and clearance strategies.

When the new Patent System comes into effect (estimated May 2017), the unitary patents will co-exist with traditional European national patents. The patent applicant may elect validation as a unitary patent at the time of patent grant. Protection in other EU countries and non-EU members of the EPO can only be obtained by traditional national patent validation at the time of grant or by filing separate national patent applications. Unitary patent validation is available for applications that are filed after March 1, 2007 and are pending when the new Patent System becomes effective.

The UPC will allow a patent holder or challenger to bring one action at the UPC and receive one judgment effective throughout the 25 Member States participating in the new Patent System. The new system will grant injunctions without considering the eBay factors applied by U.S. courts.

The UPC will take effect once at least 13 of the contracting member states (including France, Germany and the United Kingdom) have ratified the agreement. France has already ratified the agreement, and both Germany and the United Kingdom have begun the ratification process. Despite the ratification process beginning in the United Kingdom, it should be noted that a decision by the United Kingdom to end its membership in the EU could substantially delay the UPC.

The UPC will have jurisdiction to hear:

  • actions for infringement;
  • revocation actions;
  • declarations of non-infringement;
  • supplementary protection certificates;
  • actions for provisional and protective measures and injunctions; and
  • establishment of damages.

The UPC is retroactive, and thus its jurisdiction includes all cases involving unitary patents, as well as any cases involving traditional European patents without unitary effect, including those patents granted before the UPC agreement takes effect. However, Article 83 of the UPCA provides a transitional period (starting on the date the UPC takes effect) during which owners of traditional European Patents (but not Unitary Patents) have the right to opt out of the UPC and choose an alternative, national forum.

Opting Out of the UPC

Unless an action on a European patent has already been brought before the UPC, the owner of a patent granted or applied for prior to the end of the transitional period may opt out from the jurisdiction of the UPC by notifying the court's registry. The transitional period will be seven years, and may extend up to an additional seven years. After the transitional period, the UPC will handle all litigation in the participating states for the new unitary patents and traditional European patents.

Article 83.4 permits the owner to withdraw an opt-out ("opt-in") by notifying the registry. Once an opt-out is registered, it remains in force for the entire lifetime of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC agreement. There will be no possibility to opt out of a unitary patent.

Starting on the day the UPC opens, existing European patents will be subject to attack with respect to all states participating in the UPC, unless the patent owner opts out of the UPC before the patent is challenged. Thus, the jurisdictional reach of the UPC will have a retroactive effect on granted and pending European patents, making the opt-out decision important for current and future licenses involving European patents.

Filing Strategies

The UPC provides patent proprietors a unified route for obtaining patent protection and enforcing patent rights across all participating EU Member States. However, while a patent proprietor may benefit from the ability to enforce a patent in all 25 Member States via a single action, unitary patents or opted-in European patents may not be appropriate in all situations. Factors that may affect a patent proprietor's decision to file unitary patents, opt in or opt out of the UPC or file traditional European national patents may include:

Patent Strength

The UPC will likely favor European patents that are strong in compliance with the European Patent Committee (EPC). European oppositions and central revocation proceedings will be available to invalidate weak patents. Some U.S.-originated patents may not be sufficiently strong to stand up under the scrutiny of those reviews. The decision of whether to subject a patent to the UPC thus may be determined by how well the patent complies with the EPC.

Risk Aversion

Patent proprietors may decide that the new Patent System's all-or-nothing approach is not suitable for all patents. For example, patent proprietors with patents that face a higher likelihood of invalidation, or that are particularly important from a commercial standpoint, may wish to avoid the risk of central revocation in a single UPC ruling. Instead, proprietors of traditional European national patents, in which each national patent would be adjudicated separately in the traditional national courts, may prefer to pursue classical European Patents (validation of EP patents in the national patent offices, as is commonly done today, and then opt them out of the UPC) or return to the historical mode of national filing.


Irrespective of the UPC, the prosecution of patents through the EPO has traditionally taken much longer than prosecution through national patent offices. Accordingly, in cases where patent proprietors wish to quickly obtain patent protection (particular in instances where the national jurisdiction under which a potential infringer resides is limited), patent proprietors may benefit from pursuing a parallel national application or forgoing the UPC and EPO altogether.

Or some patent proprietors may elect to hedge their bets and pursue classical European patents with some filings and divisionals for Unitary Patents.

Substantive Law

As it is a product of a multi-national treaty, the UPC will implement law from many different sources, including EPC and national law from the signatory member states. Integration and adaptation of these laws may take time. In order to ratify the UPC, Member States must change their own laws in order to harmonize them with the UPC, but the substantive law may differ between UPC and Member States (see, e.g., the standard of experimental use). Such substantive differences may impact a patent proprietor's filing strategy as subtle nuances in the laws may prove favorable or unfavorable to the patent proprietor.

Procedural Effects

Along with the substantive changes to patent law, the UPC will create a series of new courts (e.g., Local Divisions, Regional Divisions, etc.). As with any new court, a patent proprietor may need to "wait and see" how the various new courts address the issues within their jurisdiction relevant to that patent practitioner, for example, how the court goes about authorizing discovery, assessing ownership and awarding injunctions.

As with any important patent strategy, decisions whether to file Unitary Patents, stay with classical European patents (and opt in or opt out of the UPC) or file traditional European national patents can be complicated and multifaceted. Please contact any Ropes & Gray attorney with whom you regularly work if you would like a more detailed discussion on the UPC and its implications for your company.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions