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Unified Patent Court (UPC) and Unitary Patent

The introduction of the Unitary Patent and the corresponding Unified Patent Court (UPC) System is set to transform the patent litigation landscape in the European Union.

Unified Patent Court System

Unified Patent Court System

With the unitary patent and the Unified Patent Court, the biggest change in European patent law since the adoption of the European Patent Convention (EPC) more than 45 years ago is currently on the horizon. The Unitary Patent will be available to users of the patent system as another option to protect their technical innovations. Furthermore, the Unified Patent Court will not only have jurisdiction in invalidity and infringement proceedings for unitary patents, but will also be the sole competent court in relation to European patents after a transitional period. The new system will enter into force in 2023 and a large number of EU Member States have opted in. Therefore, it is high time to familiarize yourself with the new system. 

Here we give you an overview of the most important topics concerning the Unitary Patent and the Unified Patent Court.

What is the Unitary Patent?

The Unitary Patent is a “European Patent with unitary effect”, i.e. a European Patent granted by the European Patent Office which, after grant, is given unitary effect for the territory of the participating member states at the request of the patent proprietor. In other words, the Unitary Patent is a “single patent granted for the participating member states” with a single court having jurisdiction over its effects.

When will the UPC system start?

The administrative preparatory phase for the establishment of the court has already started. According to the official timetable of the Preparatory Committee, the entry into force of the UPC Agreement is currently planned for 1 April 2023, with the Court opening its doors and starting to receive cases as from that date. Unitary Patents can be applied for on or after the date of entry into force of the UPC Agreement. However, European Patent Applications that are already pending can be redesignated as Unitary Patents. Existing European Patents will come under the jurisdiction of the UPC unless opted out.

In which states will the Unitary Patent be effective?

Initially, as things stand today, there will be 17 member states, as some are yet to ratify the Unified Patent Court Treaty: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. It may potentially be extended to more EU member states. Following Brexit, the UK also withdrew from the Unified Patent Court Agreement.

When do I have to file the request for unitary effect?

The application procedure of a classic European Patent and a European Patent with unitary effect is identical. As soon as the grant of the European Patent has been published in the European Patent Bulletin, patent owners have one month to file a request for unitary effect with the European Patent Office. The deadline is not extendable.

How will patent litigation in the EU change?

All participating EU member states will join the newly established Unified Patent Court (UPC), which is a supranational court whose judgments have direct effect in all participating member states.

The UPC will be a single court with jurisdiction over all Unitary Patents and all “classic” European Patents – unless they are opted out. Its jurisdiction will cover validity and infringement of these patents in one procedure for all participating member states.

For an interim period, owners of “classic” European Patents and patent applications can choose to “opt-out” from the jurisdiction of the UPC.

Going forward, national courts will only have jurisdiction for national patents or for “classic” European Patents for which the owners have declared an “opt-out” from the UPC system (initially valid for 7 years).

As long as no national revocation action has been started in a participating member state, a patentee or applicant can also withdraw the “opt-out” with the effect that the European Patent or patent application is put back into the Unitary Patent Court system. Further information on opting out is found in the next section.

Why are these changes relevant now?

  • All existing European Patents and patent applications will be affected by this change.

  • Patent prosecution and enforcement strategies have to be adjusted. In particular, patent owners need to decide between national patents, “classic” European Patents or Unitary Patents.

  • Patent owners have to decide whether to “opt-out” existing European Patents and applications from the Unitary Court system. For an interim period of seven years (which may be extended for further seven years) patent holders have the option to decide to “opt-out” their “classic” European Patents and applications from the jurisdiction of the UPC. The decision to opt out of the competence of the UPC will mean that the national courts continue to have jurisdiction.

  • An ”opt-out” is not possible from the point that an action is pending in the Unitary Patent Court. To ensure that all patent owners can secure an opt-out for their European Patents, they have the option to declare an “opt-out” during a “sunrise” period, which is expected to start three months before the official start of the UPC.

 

Patent owners should determine their strategy now if they would like to declare an “opt-out” as this decision has significant consequences. While a decision before the UPC can be an effective and quick legal protection against infringers in multiple member states, there is, of course, a risk that a patent is lost in all participating member states with a revocation action. 

3 reasons why Hogan Lovells is your partner for the UPC

We know you.

We don’t only defend, we help you create and grow. We are with you from the initial idea to the global roll out. Whether you operate in a traditional industry such as life sciences, telecommunications, automotive or energy, or are part of a new generation operating at the intersection of these industries, we are the team for you with specific knowledge in all these industries. We have scientifically trained lawyers and patent attorneys that enable us to understand the subject matter of your technology, interact with your business and commercial teams, and engage meaningfully with experts so that you can benefit from informed, tailored and practical advice.

We know the UPC.

Our people have first-hand, in-depth knowledge about the UPC having been involved in the foundation of the new court system. This knowledge has been shared through our leading commentary about the legal provisions covering the UPC, as well as training and strategic advice to our clients on the topic for almost 10 years. We continue to provide training to make sure that our clients are optimally prepared for the new UPC system. We are ready to go!

We know us.

We are one of very few firms that has top-tier patent litigators in virtually all major European jurisdictions and the UK. We are not only exceptionally well positioned to guide you through the challenges and opportunities which come with the new Unitary Patent and the UPC system but are also able to align UPC litigation with UK patent litigation or Spanish patent litigation with our own attorneys. We have a deep understanding of country-specific nuances, practices, judges, and procedures, that we can utilise when preparing a coordinated and effective pan-European strategy in a UPC litigation. Our colleagues from offices in Europe and the UK have great experience in working together on cross-border litigations in multinational teams which leads to greater efficiency, predictability, and cost-effectiveness. In short: We know us across Europe. And since we know us we can always offer the best solution to you.

What can we do for you?

We can help you – as patent proprietor, as licensor, as licencee, as seller or as purchaser of technology as plaintiff or defendant – to navigate through the chances and challenges of the new system with the following offering:

Training

Training on the UPC – various content and length of training available.

Patent portfolio

Extensive review: Review of individual European Patent families (including applications) of entire patent portfolio and recommendation on how to proceed for every member with regard to questions of structure of patent portfolio and opt-out-decision.

High level review: High level review of patent portfolio and recommendation on how to proceed with regard to questions of structure of patent portfolio and opt-outdecision based on the example of 10/20/30 patent families.

Individual review: Review of individual European Patents, applications and patent families upon individual request and recommendation on how to proceed with regard to questions of structure of patent portfolio and opt-out-decision.

Opt-out support

  • Support and filing of opt-out declaration.
  • Support and filing of opt-in declaration.

Filing Strategy

  • Development of future validation strategy regarding Unitary Patents, European Patents and national patents.
  • Regular review of the application strategy in Europe.
  • Strategic advice on new individual patent applications with regard to validation strategy.

Licenses

  • Review of existing license agreements in light of the UPC.
  • Drafting of license agreements or clauses in light of the UPC.

Litigation Strategy

  • Preparation of litigation strategies including the UPC proceedings.
  • Representation in opposition and nullity proceedings with the assistance of patent attorneys (active/passive).
  • Representation in infringement proceedings (active/passive).

Tech transactions

Advice on technology transactions, in particular with regard to the UPC.

Email

Whether you operate in a traditional industry such as life sciences, telecommunications, automotive, or energy, or are part of a new generation operating at the intersection of these industries, we are the team for you. Get in touch with us at [email protected]

Publications

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Three reasons why you might consider not to opt-out your patents from the UPC system

We recently discussed under which circumstances it might be advisable to declare an opt-out for existing European patents. However, there may be also good reasons not to declare an opt-out...

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Three reasons why you might consider to opt-out your patents from the UPC system

The option to "opt-out" from the new UPC system gives patent owners the opportunity to declare, according to Art. 83(3) UPCA, that the UPC shall not have competence for...

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UPC: update on judges

This latest publication in our UPC series takes you through the latest update on the judicial recruitment.

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