Unified Patent Court and Unitary Patent

What is the UPC?

On the 1^st of June 2023, the European patent landscape has undergone a substantial change with the launch of the Unified Patent Court (‘UPC’) and the Unitary Patent. The UPC is an international court intended to provide a centralised means of resolving disputes over the infringement and validity of Unitary Patents, European patents, European patent applications and related supplementary protection certificates (‘SPCs’). It is established under an international treaty: the UPC Agreement. The Unitary Patent is a new legal title established by EU law. It will provide uniform protection across the participating Member States which have ratified the UPC Agreement. The Unitary Patent thus differs from classic European patents, which result in a bundle of national patents once granted. Each Unitary Patent is based on a European patent and replaces that European patent in the countries where the Unitary Patent takes effect. This reform thus creates a system which allows patent holders to centrally maintain and enforce their patents in Europe, thereby reducing the time, effort and cost associated with such maintenance and enforcement in multiple countries. Conversely, the system also allows potential defendants to bring centralised revocation actions or counterclaims, and to bring centralised actions for declarations of non-infringement.

What about the old system?

Since the 1^st of June 2023, it is possible to obtain Unitary Patents and bring actions before the UPC. However, it is important to stress that this new system does not replace the old one. It is still possible to obtain European patents, even in Member States which have ratified the UPC Agreement. Patent applicants can now either apply for a Unitary Patent (i.e., a European patent with unitary effect) or obtain a European patent which results in a bundle of national patents. Moreover, European patent holders have the right to opt out of the jurisdiction of the UPC during a transitional period of at least 7 years.

Why opting out of the new system?

The main reason for opting European patents and SPCs out of the new system is to avoid centralised revocation actions or actions for declarations of non-infringement. Opting out of the system is only possible provided that no action has been brought before the UPC prior to the registration of the opt-out. There are no costs related to opting out. The system also allows holders to withdraw an opt-out at any time, provided no action has been brought before a national court in relation to the patent or SPC concerned prior to them filing such a withdrawal. Opting out therefore entails the risk of not being able to get back into the system.

Where has the new system taken effect?

Unitary patents take effect in all participating Member States which have ratified the UPC Agreement. Currently, the following 17 EU Member States have ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. This means that, subject to certain exceptions, the decisions of the UPC automatically cover all of these EU Member States. Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, Slovakia and Spain are currently not participating in the system: although some have signed, none of them have yet ratified the UPC Agreement. Non-EU Member States may not participate in the new system, even if they are members of the European Patent Convention. These include the UK, Norway, Switzerland and Turkey.

How will the UPC be structured?

The UPC is composed of a Court of First Instance (‘CFI’), with divisions across Europe, and a Court of Appeal (‘CA’) located in Luxembourg. The CFI currently consists of one central division (with its seat in Paris, and sections in Munich and soon Milan), one regional division (with its seat in Stockholm) and 13 local divisions (Brussels, Copenhagen, Düsseldorf, Hamburg, Helsinki, Lisbon, Ljubljana, Mannheim, Milan, Munich, Paris, The Hague and Vienna). All UPC panels will include judges of different nationalities. The panels of the central division, which will mainly deal with revocation actions, and of the CA will be composed of both legally qualified and technically qualified judges. The panels of local and regional divisions, which will mainly deal with infringement actions, will be composed of legally qualified judges, as well as a technically qualified judge under certain conditions.

How can we help?

Stibbe is one of the leading patent litigation teams on the Belgian market. We represent clients in all areas of technology, including chemistry, pharma, biotech, engineering and telecommunications. We have extensive experience in acting together with other top-tier patent litigation firms across Europe in multi-jurisdictional patent litigation. Acting before the UPC will often require legal and technical expertise from different jurisdictions. Our large, expert team and our strong ties with top-tier litigators in other UPC countries mean we can represent you and assist you in preparing litigation before the UPC. We can also help you adapt your patent strategies to the new patent landscape, and advise you on opting out, patent portfolio management, licensing and collaboration agreements. Please contact us if you would like to know more. We will be happy to help.