UNITARY PATENT SYSTEM

WHAT IS IT?

Unified Patent Court (UPC) & Unitary Patent together form the Unitary Patent System.

The Unified Patent Court (UPC) is a separate and distinct element from the Unitary Patent which falls under the jurisdiction of the UPC.

UNIFIED PATENT COURT (UPC)

The Unified Patent Court (UPC) will be a new common administrative patent court that will be part of the judicial system of many, but not all, of the countries of the European Union.  The UPC will have exclusive competence in respect of European Patents but only for those European Union countries that have joined the UPC.

It is important to note that the UPC has exclusive competence in those countries only for European patents filed via the European Patent Office and not national patents filed and obtained domestically via individual national patent offices. Infringement and revocation actions must still be brought individually before the national courts for such national patents.

The objective of the common court is to simplify and streamline court procedures using panels of qualified judges with technical backgrounds located in different UPC countries (judgments at first instance within approximately one year of filing the action). Substantive patent law relating to infringement cases will be harmonised.

WHICH COUNTRIES ARE IN AND WHICH ARE OUT?

There are 39  member States in the European Patent System but only those that are also EU member
states can be part of Unitary Patent System

There are  currently 17  UPC Member States:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden

The following European Union countries are in enhanced cooperation to bring out the Unitary Patent System but are not yet UPC Member States:

Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, Slovakia

The following European Union countries have NOT joined in the enhanced cooperation and are not a UPC Member State :

Croatia, Spain

Other countries that do NOT qualify to join the UPC because they are not part of the European Union:

Albania, Iceland, Lichtenstein, Monaco, North Macedonia, Norway, San Marion, Service, Switzerland, Turkey, United Kingdom

Note that even though these countries do not qualify to join the UPC, they are still members of the European Patent Convention and the European Patent System. Consequently, a patent can still be obtained in these countries by filing a European Patent Application and all infringement and validity actions must continue to be brought before the individual national courts for these countries.

WHAT POWER DOES THE UNIFIED PATENT COURT HAVE?

Exclusive competence in respect of:

“Classic” European Patents

European Patents with Unitary Effect “Unitary Patents”

Supplementary protection certificates issued for a product covered by European Patents and European Patent Applications

The exclusive competence is for matters including:

  • infringement and validity actions
  • non-infringement declarations
  • revocations and counterclaims
  • provisional & protective measures and injunctions
  • declarations of non-infringement
  • actions concerning decisions of the European Patent Office in carrying out tasks referred to in the EU regulation on the Unitary Patent System

THE TRANSITION PERIOD – EXCEPTIONS TO EXCLUSIVE COMPETENCE

During a transitional 7 year period (which may be extended by up to another 7 years),  proprietors of the “Classic” European Patents but NOT  Unitary Patents, may opt out of from the UPC for the entire lifetime of the patent provided an action has not been brought before the UPC.

By opting out, actions for infringement or for revocation must be brought instead before the individual national courts of the UPC countries.   Applicants for European patents applied for before the end of the transitional period will be able to opt out also. The patent proprietor will have to inform the Registry of the UPC of the opt out and this will take effect upon entry in the Register.

The sunrise period for opting out will start 3 months before the UPC becomes operational.

WHEN WILL THE UPC START ?

 The Unified Patent Court has announced the Unified Patent & Unified Patent Court sunrise period will start 1 January 2023 and the target start date is 1 April 2023. The beginning of operations of the UPC will be triggered by the entry into force of the UPC Agreement which will happen on the first day of the fourth month after deposit of the German instrument of ratification.  This ratification will also mark the start of the sunrise period in which it will be possible to start opting out existing “classic” European patents from the UPC.

CONTACT US TO DISCUSS MORE

European Patent Attorneys on our team are eligible to represent before the UPC

Please contact FAI UK at info@faipatents.co.uk for further information regarding the UPC and the opt out process.

 

 

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