The UPC and Unitary Patent explained

In the present system under the European Patent Convention (EPC), once a European patent (EP) is granted, the patent exists as a “bundle” of national rights. Each patent in this bundle forms an individual, national patent in a designated contracting state. Renewal fees must be paid at each of the respective national offices. These national rights are generally only subject to court proceedings in each territory, independently of the other territories. For example, if you wish to revoke a European patent covering France, Germany, and the UK, you must approach the courts in each territory to pursue a revocation action.

In contrast, the UPC and Unitary Patent has “unitary” effect across all the signatory member states. The patent thus exists as a single, indivisible patent that covers all member states collectively. Non-EU member states therefore cannot be members and all EU member states are expected to be members, except in the case of those that have specifically opted not to participate. The Unitary Patent provides a single renewal fee and administration system. Proceedings, such as infringement or revocation actions, are held in the UPC, which decides on the issues, having effect across all of the member states. During a revocation action, the patent therefore lives or dies in all the members simultaneously.

The Unitary Patent is currently expected to cover all EU countries, except Spain and Croatia who have not opted into the system. The member states currently include France, Germany, Austria, the Benelux countries, Sweden, Finland, Italy, Demark, Portugal, the Baltic States, Slovenia, Malta, and Bulgaria, with the Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia so far intending to join in the future. However, notable exceptions include the UK, Spain, Norway, Switzerland, Turkey, and other non-EU states part of the EPC.

For the UPCA to take full effect, three steps must be satisfied, namely:

1. The Brussels I Regulation amendment enters into force
2. Ratification by three EU states with most European patents in effect in 2012
3. Ratification or accession by at least thirteen state

The Brussels I Regulation amendment entered into force May 2014 – so far so good. By August 2017, at least 13 states had ratified the UPC – again, now we’re moving. In 2012, the EU states with the most European patents were the UK, Germany, and France. France ratified the agreement in March 2014 and the UK in April 2018. However, the UK then formally withdrew their ratification in July 2020. As Italy is the next in line for having the most European patents, and having ratified the agreement in February 2017, Italy simply took the place of the UK.

However, ratification in Germany hit a stumbling block, as a complaint against UPCA was submitted to the German constitutional court. Nevertheless, the Bundestag successfully introduced a new bill to ratify the UPCA. Germany must now deposit its instrument with the EU council for the UPCA to fully take effect.

The UPC will come into effect on the first day of the fourth month after the month in which the last ratification required by the UPCA is deposited. To translate: as soon as Germany deposits the instrument to the EU council, a 3–4-month period will be triggered to implement the UPC.

The Protocol on a Unified Patent Court on Provisional Application (PPA) came into force January 2022. This gives the UPC a period to make final preparations for the UPC, for example, recruiting judges, organising IT systems, and finalising the court facilities. The PPA triggers the provisional application period (PAP) which will last at least 8 months, according to the UPC Preparatory Committee.

It is still not certain at this point, but it is likely to start late 2022 or early 2023.

Before a Unitary Patent can be registered by the European Patent Office (EPO), the applicant must first obtain a conventional European patent. The European patent application can be filed and processed in the same way as European patent applications are now.

Once a European patent has been granted, the proprietor must file a "request for unitary effect" to obtain a Unitary Patent. The request must be filed within 1 month from grant of the application. It should be noted, however, the applicant may still use the conventional European Patent to obtain protection in member states not covered by the Unitary Patent.

Once the UPC comes into effect, the unitary court will have jurisdiction over all UPs and EPs designated in participating member states.

However, there is a 7-year transition period (extendable by a further 7 years), in which applicants can opt out of the jurisdiction of the UPC for their European patent (a UP will always be under the jurisdiction of the UPC). The European patent can therefore be litigated in the national courts as they currently are. This opt out can only be applied if proceedings have not already been brought before the UPC.

If the applicant does not opt out, then the European patent is under jurisdiction of both the national courts and the UPC during the transition period (often referred to as the “dual system”). The applicant may therefore have a choice of court in which to pursue proceedings.

There is also a “sunrise” period of a few months before initiation of the UPC when the applicant can request an opt out of UPC jurisdiction. This allows applicants to opt out of the UPC before it is possible to initiate proceedings in front of the UPC.

Whether applicants wish to utilise the UPC is likely to be dependent on several factors, including the size of the applicant, their resources, overall patent strategy, and appetite for risk.

Whilst the UPC does present some advantages, there are some clear disadvantages, and it is yet to be seen whether applicants are likely to proceed with a Unitary Patent. Whether applicants will take to the UP or not, only time will tell.