One of the most significant reforms in recent European patent law and practice, the Unitary Patent system, is set to begin in 2023. The new system will impact patent owners and applicants around the world.
The change involves the introduction of two inextricably linked reforms:
- the introduction of the Unitary Patent; and
- the commencement of the Unified Patent Court (UPC).
The sunrise period for the UPC commenced on 1 March 2023 and the UPC, along with the Unitary Patent system, is set to start operating on 1 June 2023. This Insight will tell you what you need to know, specifically:
- what a Unitary Patent is and how it will work;
- what the UPC is and how it will work; and
- the issues you need to consider when making decisions about patent strategy.
What is a Unitary Patent?
The ‘classic’ European Patent
Prior to the introduction of the Unitary Patent system, applicants have filed a single patent application with the European Patent Office (EPO) that covers all 39 members of the European Patent Convention (EPC). However, following grant by the EPO, the classic European Patent splits into multiple national patents that are each prosecuted (and litigated) separately. This has led to different decisions in different jurisdictions.
What is a Unitary Patent?
A Unitary Patent is a European Patent that will have ‘unitary effect’ - that is, it will provide uniform protection across all participating Unitary Patent system countries, on a one-stop shop basis.
To obtain a Unitary Patent, applicants will need to apply for a classic European Patent and within one month of grant, file a ‘request for unitary effect’.
Infringement and revocation proceedings in relation to Unitary Patents will then be conducted in the new UPC (as outlined below) and decisions of the UPC will have effect in all participating nations.
What if I already own or am already applying for a classic European Patent?
Current classic European Patent holders or applicants can now (that is, from 1 March) elect whether to opt-out of the jurisdiction of the UPC. The decision to opt-out can be made until one month before the end of the seven year transitional period.
Which countries have signed on to the new Unitary Patent system?
While 24 EU member states have signed the Agreement on a Unified Patent Court (UPCA), only 17 countries have ratified the UPCA. These 17 countries will be the first UPC participating countries from 1 June 2023 (in addition to any other EU member states that ratify the UPCA between now and then): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
Despite being members of the EPC, as the United Kingdom and Switzerland are not part of the EU, they are not eligible to join the Unitary Patent system. The UK was an early proponent of the Unitary Patent system, however following Brexit, it withdrew its membership.
What happens if you choose not to apply for a Unitary Patent?
Unitary Patents will coexist with nationally enforceable classic European Patents. National patents that follow European filings can still be obtained via the traditional route in any EPC member states if Unitary Patent protection is not requested.
What is the Unified Patent Court (UPC)?
The UPC is the new European common patent court that, from 1 June 2023, will hear infringement and validity actions in relation to Unitary Patents and classic European Patents (where the owner has not filed an opt-out request).
Actions in respect of classic European Patents may still be brought before national courts during the seven year transitional period (noting that the transitional period may be extended for a further seven years). After the end of the transitional period, claims in relation to classic European Patents can only be brought in the UPC unless the owner or applicant of the relevant patent opted-out of the UPC’s jurisdiction by the opt-out deadline.
The structure of the UPC
The UPC will consist of a Court of First Instance and a Court of Appeal. The Court will also provide a Patent Mediation and Arbitration Centre.
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COURT OF FIRST INSTANCE
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COURT OF APPEAL
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PATENT MEDIATION & ARBITRATION CENTRE
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The Court of First Instance will have a central division as well as local and regional divisions. Member states can make requests for the establishment of local divisions. Two or more member states may request that regional divisions be established. The central division will primarily sit in Paris but will also have sections in London and Munich. |
The Court of Appeal will sit in Luxembourg and will hear appeals from the Court of First Instance. |
The Patent Mediation and Arbitration Centre will be seated in Lisbon and Ljubljana. The Centre will provide facilities for mediation and arbitration of patent disputes within the UPC’s jurisdiction. The Centre will have a list of mediators and arbitrators to assist parties to settle disputes. |
Judicial appointments
The UPC will have both legally qualified and technically qualified judges. Legally qualified judges will have qualifications required for appointment as judicial officers in a member state. Technically qualified judges will have a university degree and expertise in a particular field of technology, as well as knowledge of civil patent law and procedure.
Judges appointed to the Court of First Instance will form a pool of judges from which technically qualified judges will be drawn to sit on the Court of Appeal. Judges will be appointed for a term of 6 years and may be re-appointed.
The Court will be represented by the President of the Court of Appeal, who will be elected by Court of Appeal judges for a term of 3 years by secret ballot. The President may serve no more than 3 terms.
The judges that have been appointed are here. Dr Klaus Grabinski, a judge of the German Federal Court of Justice, has been appointed as the first President of the Court of Appeal.
Court of First Instance
The Court of First Instance will sit as 3 judges, unless the parties agree to the appointment of a single, legally qualified judge. In the local and regional divisions either of the parties may request an additional technically qualified judge with qualifications and experience in the relevant field of technology.
- Local division
In the local division, if less than 50 patent cases are commenced in each of the first 3 years, the panel of judges will move to 1 legally qualified judge (a national of the member state hosting the local division) and 2 legally qualified judges who are not nationals of the host member state.
If more than 50 cases are commenced per year, the panel of judges will move to 2 legally qualified judges (nationals of the host member state) and 1 legally qualified judge who is not a national of the host member state.
- Regional division
The panel of judges of the regional division will consist of 2 legally qualified judges chosen from a regional list of judges who are nationals of the member states that host the regional division, and 1 legally qualified judge who is not a national of the host member states.
- Central division
The central division panel of judges will consist of 2 legally qualified judges (nationals of different member states) and 1 technically qualified judge with qualifications and experience in the relevant field of technology. However, if the panel is dealing with a question about a decision of the EPO, then the panel will include 3 legally qualified judges who are nationals of different member states.
Court of Appeal
The Court of Appeal will comprise a panel of 5 judges — 3 legally qualified judges who are nationals of different member states and 2 technically qualified judges with qualifications and experience in the relevant field of technology. If the panel is considering a question about a decision of the EPO, the panel will be composed of 3 legally qualified judges who are nationals of different member states.
Remedies
The UPC will have the power to grant remedies including:
- interim orders, such as orders to preserve evidence and inspect premises and freezing orders;
- permanent injunctions to restrain infringement;
- declarations of infringement and orders requiring recall of products from supply channels;
- an order revoking the patent wholly or in part; or
- an award of damages.
What patent owners and applicants need to do now
During the sunrise period, owners and applicants of classic European Patents can choose to opt-out of the jurisdiction of the UPC. The decision to opt-out can be made until 1 May 2030 (i.e. one month before the end of the seven year transitional period), unless the transitional period is extended for a further seven years.
Patent applicants should also consider whether to apply for a Unitary Patent. The EPO is currently accepting early requests for unitary effect, which will enable the EPO to register a Unitary Patent immediately on the start of the Unified Patent system on 1 June 2023.
We look forward to seeing this new patent system in operation.