26 EU Member States participated in the enhanced cooperation procedure to establish the unitary patent (including the UK which has now withdrawn). However unless these states have also ratified the Unified Patent Court Agreement (UPCA) then the unitary patent (UP) will not be effective in their jurisdictions. Poland has participated in the UP but has not signed the UPCA and so the UP will not have effect there, nor will it apply to Croatia or Spain which have still not signed the UPCA or participated in the UP. Now the UK is not in the UPC system nor the EU, UPs will not have effect in the UK either.
See the table produced by the Council of Europe which shows which have signed and which states have then ratified (with dates) the UPCA.
At the time that the provisional application period commenced (19 January 2022) 16 of the other 24 EU Member States had fully ratified the UPC Agreement with Germany also guaranteed to join the system, so a UP granted on the first day the UPC is active would only apply to those 17 states if no others ratify in the interim. A UP will only ever have effect in the states that have both ratified the UPCA and taken part in the UP Regulation at the time that particular patent's unitary status is registered.
Since no non-Member State countries are able to take part in the UPCA on its current drafting, the UP will not extend to all the EPC states in relation to which it is currently possible to request EP designations. Aside from the EU states mentioned above, all non-EU EPC states will also be excluded.
EU Member States where the UP will not apply (given the current state of UP participation and UPCA ratification):
- Spain – has declined involvement in UP or UPC and has challenged the use of the enhanced cooperation procedure to establish the UP and the language regime at the Court of Justice of the European Union which rejected both attempts (see our IP e-bulletin of 5 May 2015 on the CJEU's decision to reject the latest challenges).
- Poland – participated in enhanced cooperation establishing the UP but has said it will not sign the UPC (for now), thus a UP will not be enforceable in Poland since enforcement can only occur via the UPC.
- Croatia – has not agreed to the UP enhanced procedure or signed the UPC Agreement. However Croatia only joined the EU on 1 July 2013 so it may well catch up with these agreements soon. There is no suggestion that it has any particular objections to the UP/UPC system.
- At the time that the provisional application period commenced (19 January 2022) 16 of the other 24 EU Member States have fully ratified the UPC Agreement with Germany also guaranteed to join the system, so a UP granted on the first day the UPC is active would only apply to those 17 states if no others ratify in the interim. The states which have signed the UPCA but have not yet ratified are: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
- NB A UP will only ever have effect in the EU Member States that have both ratified the UPCA and taken part in the UP Regulation at the time that particular patent's unitary status is registered.
The UP will also not apply in EPC member states which are not eligible to be signatories of the UPC Agreement, although they are European Patent Convention signatories and are options for designation under the EP – Norway, Turkey and Switzerland
Whilst it was originally a party to the UPCA and took part in the Unitary Patent enhanced procedure, the UK has withdrawn from the UPC system (and the EU) and UPs will not cover the UK.
See our summary of who's currently in and who's out of the UP/UPC system below
- IN: UPC participating Member States that have ratified the UPCA in respect of the non-opted out EPs of which the UPC will have jurisdiction and UPs will have effect (16): Belgium, Bulgaria, Denmark, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, Sweden – Germany will make this 17, once it ratifies the UPCA and triggers the commencement of the UPC.
- SIGNED: UPC participating EU Member States that have signed but not yet ratified the UPCA – if these states do not ratify before the UPC comes into effect, the UPC will have no jurisdiction until ratification and UPs granted prior to ratification will not have effect here (7): Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
- Germany has not yet ratified but its ratification will trigger the commencement of the UPC system so UPs will have effect there and the UPC will have jurisdiction of course.
- OUT: EU Member States which are not currently participating in the UPC (3) – Spain, Poland, Croatia.
- OUT: Non-EU EPC states (not part of the UPC/UP system): Iceland, Norway, Turkey, Switzerland, Serbia, Albania, Macedonia and the UK.
See also on this hub: How to get a Unitary Patent
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.