The Unified patent court and unitary patent – An introduction

The Unified Patent Court and unitary patent are now a reality as of 1 June 2023. 

• The Unified Patent Court (UPC) has jurisdiction over
  • all European patents (EPs) (current and future) designated to participating EU Member States which have ratified the UPC Agreement (UPCA) (currently 18 EU MS: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia, and Sweden) unless they have been opted out of the new court's jurisdiction. Spain, Croatia and Poland are not participating, and other EU member states have signed the UPCA but have yet to fully ratify. The UK originally participated in the UPCA but then withdrew.
  • all unitary patents (UPs)
• The unitary patent right (UP) (also known as a European patent with unitary effect) was established via enhanced cooperation under Regulation 1257/2012 of 17 December 2012, provides a single supra-national patent right covering all the EU Member States which took part in the enhanced cooperation and have fully ratified the UPCA (currently 18 states – see above). The option to select unitary effect at grant became available as soon as the new court system, the UPC, set up to enforce it, came into effect.
  
  Unitary effect can be selected within a month of grant (nb the EPO established a procedure (in place since 1 January 2023) whereby patents coming nearing grant could delay grant in order to benefit from unitary effect once it was available from 1 June 2023 when the UPC was available to enforce UPs).
  
  A particular UP will only ever cover the UPCA participating member states at the date that its unitary status was granted. Read more on this hub on applying for UPs, EP opt-out,  Jurisdiction and opt-out  and EP, UP and patent portfolio strategy in the light of the new UPC & UP system.

The Jurisdiction of the UPC and national courts:

The UPC has exclusive jurisdiction over UPs and EPs that have not been opted out of its jurisdiction.

However, for a transitional period, national courts will continue to have jurisdiction over non-opted out EPs, as well as the UPC having jurisdiction over them in relation to validity and infringement.

The transitional period will last at least 7 years but could be extended by up to another 7 years following an assessment at the 5 year point. At any time during this transitional period, EPs can be opted out of the UPC's jurisdiction (and have their opt-outs withdrawn, i.e. be opted back in – although there are some restrictions). At the end of the transitional period, EPs granting after this point will not be able to be opted out of the UPC's jurisdiction; they, along with any EPs that had not been opted out during the transitional period (or EPs whose opt-outs had been withdrawn), will then be under the exclusive jurisdiction of the UPC without any other future option.

For more on this see the Jurisdiction and opt-out section of this hub.

The structure of the UPC court system:

The UPC has three types of first instance court:

• local divisions in participating states;
• regional divisions; and
• and a central division with three seats.

Regional divisions are a form of local division providing a UPC first instance court for several participating states at once where the number of patent cases a year would be too low to merit individual local divisions in those states.

Infringement actions can be brought in a local, regional or even central division court, but the central division has exclusive jurisdiction to decide applications for declarations of non-infringement and revocation (see the section of this hub on UPC structure).

The central division has been split between Paris (the main seat of the central division), Munich, and a third seat in Milan (previously assigned to London before the UK withdrew from the UPCA).

Each seat of the central division will deal with cases dependent on the subject matter of the patents involved, based on IPC classifications.

• Milan: The Milan seat of the UPC Central Division handles cases involving patents in IPC class (A), but not those involving supplementary protection certificates (SPCs) which will be dealt with by Paris. 
• Munich: The Munich seat of the Central Division, hears cases involving patents in IPC class F (concerning mechanical engineering, lighting, heating, weapons and blasting), as well as handling patents in IPC class (C) – some pharmaceuticals including patents relating to peptides and nucleic acids and also genetic engineering.
• Paris: The Paris seat of the central division hears cases involving patents in IPC sections (B), (D), (E), (G) and (H), as well as all cases involving patent in classes (A) or (C) with SPCs.

Choosing EPs, UPs or national patents? 

European patents (EPs) are applied for centrally, at the European Patent Office (EPO), and then on grant are converted into a bundle of national patent rights, designated to whichever European Patent Convention signatory states have been selected by the applicant. This process continues in the era of the UPC but applicants now have the choice to apply for an EP with unitary effect (a unitary patent - UP) covering all the UPC participating states, as well as normal EPs for non-UPC participating states. All EPs and UPs will be under the jurisdiction of the UPC if not opted out.

As mentioned above, for a transitional period, the proprietor of an EP may choose to "opt-out" of the UPC system and retain the right to solely litigate its EP's designations separately in national courts. Once this period has passed (after 7 years from 1 June 2023, although this may be extended to 14 years in total), all EPs which have not already been opted out will be litigated "centrally" using the UPC system. For more on the consequences of opting out or not doing so see the Jurisdiction and opt-out section of this hub and our feature articles for PLC Magazine.

It is still possible to apply for national patents (NPs) instead of EPs (or UPs) by lodging separate applications at each of the national patent offices. These national patents are not be under the jurisdiction of the UPC and actions relating to them continue to be heard by national courts.

Opting out EPs or registering national patents are therefore ways of avoiding the new UPC system if there are strategic reasons for doing so.

Regulation 1257/2012 establishing the UP has been in force for some time, but the grant of UPs was dependent on the enforcement mechanism, the UPC, being fully established, so the first UP could not be granted before 1 June 2023. Any European patent (EP) application coming to grant can now be converted into a UP at grant if the applicant so chooses within a month of grant. The EPO also devised a system to allow applicants to delay grant in order to take advantage of the unitary status at Day 1 on the UPC – see our blog post on this here, which was in effect from 1 January 2023. As mentioned above, an individual UP will only have territorial coverage of the states fully participating at the date that unitary status is granted. Currently this covers 17 states but more may fully ratify in future however, this will not change the coverage provided by EPs already registered for unitary effect (UPs) but later UPs will be able to benefit from an expanded territory if more states have ratified at the time they grant. For more on how to get a unitary patent see here. 

For coverage of non-UPC EU states (Spain, Poland, Croatia and, currently, Ireland, Greece several others – see here) and non-EU EPC states (eg Switzerland, Norway, the UK and Turkey), classical EP applications can still be made at the EPO – as well as for individual EU and UPC states if unitary patents are not preferred. Unitary patents will be solely under the jurisdiction of the UPC, so if this is a forum in which a patentee would prefer not to be involved in proceedings, selecting classical EPs and opting them out of the UPC's jurisdiction is the way to go.  Whether or not a unitary patent is selected, it is likely that other non-UPC participating EPC states will be needed too (including the UK, Spain and currently Ireland and Greece for example inter alia) and so there will be a mosaic of coverage consisting of both a unitary patent and several classical EPs.

For more on the UPC and unitary patent see our series of feature articles published in PLC Magazine's March and April editions 2022 and shared in pdf form on our IP Notes blog here.

• SEE MORE ON OUR UPC AND UP HUB
  • Hub home page & How we can help
  • The UPC & UP – an introduction
  • UPC court structure
  • UPC: Jurisdiction and opt-out
  • Which states are in the UPC and where will a UP have effect
  • The UPC Rules of Procedure
  • How to get a UP 
  • UPC Court fees
  • Impact of UPC and UP on patent portfolios, co-ownership and licensing
  • UPC: mediation and arbitration
  • Key documents (legislation and agreements)
  • Costs