FAQ – English
Unitary Patent
What is a unitary patent?
The unitary patent, also referred to as patent with unitary effect, is a type of European patent whose territorial protection covers in a unitary way all of the Member States of the European Union that have ratified the Agreement for the Unified Patent Court (UPC).
The unitary effect is requested after grant of the European patent for the countries covered by the unitary effect. Protection is also known as unitary protection because it can be abandoned, transferred or found invalid only in respect of all the countries covered by the unitary effect.
In short, a unitary patent is an option given to patentees, which can replace a classic European patent in those States where the unitary effect applies.
When can a request for unitary effect be filed?
Since the entry into force of the UPC Agreement on June 1st 2023, a request for unitary effect may be filed for any granted patent within one month of the date of publication of the mention of the grant of the patent in the European Patent Bulletin.
What is the territorial scope of a unitary patent?
The territorial protection of a unitary patent covers, in a unitary way, all of the Member States of the European Union that have ratified the UPC Agreement.
18 States have already ratified the UPC Agreement: Austria; Belgium; Bulgaria; Denmark; Estonia; Finland; France; Germany; Italy; Latvia; Lithuania; Luxembourg; Malta; the Netherlands; Portugal; Romania; Slovenia; and Sweden.
In the future, the territorial scope may be extended to the other signatory States of the UPC Agreement(1) and may thus cover 24 States of the European Union.
The scope of this territorial protection is determined for each unitary patent at the time of registration of the unitary effect of the European patent. Such scope shall not evolve subsequently, even though new States ratify the UPC Agreement while the unitary patent is in force.
(1) The other signatory States to which the territorial scope may be extended: Cyprus, Greece, Hungary, Ireland, Slovakia, Czech Republic.
Who should file a request for unitary effect?
The requester for unitary effect must be the proprietor of the European patent as entered in the European Patent Register at the date of filing of the request for unitary effect or, at the latest, at the date of registration of unitary effect in the Register kept by the EPO.
If there is more than one proprietor in respect of the States covered by the unitary effect, all should appear as requesters for unitary effect.
Please note that unitary effect may also be requested through a representative.
BEAU DE LOMENIE has many representatives entitled to represent you with expertise in all technical fields.
What are the consequences of choosing a unitary patent, compared to national validations?
For these States, to choose the unitary patent means that the Unified Patent Court (UPC) has sole jurisdiction to deal with questions concerning the revocation and infringement of said patent, including to decide on provisional measures. By bringing a single action before the UPC, the proprietor of a unitary patent may thus bring an action relating to infringement acts in different countries covered by the unitary patent.
Symmetrically, any third party that is affected by a unitary patent may launch an action to revoke the unitary patent before the UPC. Under such circumstances, should the patent be found invalid or limited, it shall be found invalid or limited for all the States covered by the unitary effect.
Since a unitary patent has a unitary character, it may only be transferred, found invalid, revoked, limited or lapse in respect of all the States wherein the unitary effect applies. Thus, the territorial scope of a unitary patent cannot be adjusted over time.
In short, with a single title, the unitary patent offers broad protection covering a large number of States of the European Union as well as simplified administration as it also has a unitary character.
What are the costs associated with a unitary patent?
No official fee is required to apply for a unitary effect, and thus obtain a unitary patent.
During an interim period of at least 6 years, only one full translation of the patent shall be required. It can be adapted from an already available translation. At the end of the interim period, a unitary patent can be obtained without filing a translation.
The unitary patent shall then be maintained through payment of a single renewal fee to the EPO. The renewal fee has been set approximately at the equivalent cost of renewal fees for the four countries where a European patent is most frequently validated. A reduction of 15% shall be offered to patent proprietors who declare to the EPO that they are willing to grant a license to any concerned third party.
Which translations are required in the case of a unitary patent?
For an interim period of at least 6 years, a request for unitary effect shall be submitted together with a full translation of the concerned European patent:
- either into English, when the European patent was granted in a language other than English; or
- into any language of the European Union, if the European patent was granted in English.
The translation needed for obtaining a unitary patent has no legal effect and is for information only.
At the end of the interim period, no further translations shall be required to obtain a unitary patent, except, of course, the translations of the claims as required for the grant of the European patent.
For those States that are not covered by a unitary patent, what are the formalities to be performed?
For those States that are not covered by a unitary patent, national validation formalities, i.e. country by country, may be necessary. The formalities to be performed after the grant of the European patent remain the same as those that were necessary before it was possible to obtain a unitary effect.
Thus, for example, in order for a granted European patent to have effect in Spain, it is still necessary to file a translation into Spanish and to pay the renewal fees to the Spanish Office.
What are the possibilities of simultaneous protection between a French prior patent and a unitary patent, or the French part of a European patent?
The simultaneous protection of a unitary patent with a French patent of same filing or priority date is possible.
The simultaneous protection is also possible with a classic European patent covering France, provided that it is not subject to an opt-out.
UPC
What is the UPC?
The Unified Patent Court (UPC) is an international court created by the Agreement on a Unified Patent Court of 19 February 2013 (UPC Agreement). The Court has exclusive competence to adjudicate on infringement and revocation disputes relating to all European patents (unitary patents and classic European patents) and any SPCs based on said patents, for those States that have ratified the UPC Agreement.
Caution: there are exceptions from the exclusive competence of the UPC with respect to classic European patents and SPCs based on such patents (see transitional period and opt-out).
When did the UPC start handling cases?
The UPC opened on the same day of entry into force of the UPC Agreement, i.e. 1 June 2023. This date is also the date of application of the European Union regulations implementing the unitary patent.
The date of entry into force of the UPC Agreement was preceded by a 3-month period, referred to as the “sunrise period” which started on 1 March 2023.
What is the geographical coverage of UPC decisions?
UPC decisions that relate to a European patent shall apply in the States part of the European Union (EU) that have ratified the UPC Agreement and for which said European patent is in force. There are currently 18 EU countries that have ratified the UPC Agreement(1), with a possibility of extension in the future to the 24(2) States of the European Union signing the UPC Agreement.
Thus, should the patent be found invalid by the UPC, revocation thereof shall be pronounced for all the concerned States. This applies whether the European patent in question is a unitary patent or a classic European patent. On the other hand, the revocation decision shall be ineffective in the States that have not ratified the UPC Agreement.
In terms of infringement, bringing a single court action before the UPC shall make it possible to obtain a decision that shall apply to all the States that have ratified the UPC Agreement and in which the classic European patent or the unitary patent is in force.
(1) Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden.
(2) List (1) + Cyprus, Greece, Hungary, Ireland, Romania, Slovakia, Czech Republic.
The jurisdiction of the European courts in patent disputes, European patent academy, 2018
What are the UPC’s areas of competence?
The UPC has exclusive competence in respect of all European patents (unitary patents and classic European patents) and SPCs based on such patents, in the States that have ratified the UPC Agreement, for:
- Actions for actual or threatened infringements;
- Actions for declarations of non-infringement;
- Actions for provisional and protective measures and injunctions;
- Revocation actions and counterclaims for revocation;
- Actions for damages;
- Actions for compensation for licences of right; and
- Actions concerning the decisions of the EPO in the administration of the unitary patent.
Caution: During the transitional period, opting out from the exclusive competence of the UPC shall be possible (see transitional period and Opt-out).
What is the transitional period?
The transitional period is the period during which:
- the UPC and the national courts share the competence in revocation and infringement actions for the States that have ratified the UPC Agreement in respect of classic European patents and SPCs based on such patents; and
- a request for opting out, commonly referred to an opt-out, may be filed by the proprietor of a published European patent application or a classic European patent, or by the holder of an SPC based on such a patent in order to exclude the competence of the UPC.
This transitional period will last 7 years. It may be renewed once for another seven-year period.
What is the residual competence of national courts?
The national courts remain competent, whatever the title in suit, to deal with patent ownership and contractual litigation.
The national courts also remain competent for actions relating to:
- national patents as well as to SPCs based on such patents;
- national parts of European patents as well as to SPCs based on such patents of a State that has not ratified the UPC Agreement; and
- national parts of classic European patents as well as to SPCs based on such patents of a State that has ratified the UPC Agreement but for which an opt-out has been obtained.
In addition, during the transitional period, the national courts have shared competence with the UPC for classic European patents and SPCs based on such patents, with plaintiffs on the main action being able to choose between the competence of the national courts and the UPC.
Is it possible to exclude the competence of the UPC?
It is not possible to exclude the UPC’s competence for unitary patents and SPCs based on such patents.
In respect of published European patent applications and classic European patents and SPCs based on such patents, such exclusion can be obtained by the real owner(s) by filing an opt-out during the transitional period.
What is the sunrise period?
The sunrise period was a period of 3 months between the ratification of the UPC Agreement by Germany and the entry into force of the UPC Agreement. It started on March 1, 2023 and ended on May 31, 2023.
During this period, applicants for a patent application, proprietors of a European patent or holders of an SPC based on such a patent had the possibility to file an opt-out request. The opt-out filed during this period has been considered effective on the date of entry into force of the UPC Agreement. In this way, the proprietors excluded the competence of the UPC.
What is the UPC structure?
The UPC comprises a Court of First Instance and a single Court of Appeal with its seat in Luxembourg.
The UPC includes a Mediation and Arbitration Centre with seats in Lisbon, Portugal and Ljubljana, Slovenia.
The UPC applies EU law and respects its primacy. Thus, in case of questions about the interpretation of EU law or its validity, it must refer such questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling.
The Court of First Instance of the UPC is composed of a central division and several local and regional divisions.
The central division has its seat in Paris, France, a section in Milan, Italy and a section in Munich, Germany.
The distribution within the sections of the central division is based on the relevant technical field:
- cases relating, in particular, to physics and electricity and supplementary protection certificates (SPCs), are assigned to the section of the central division located in Paris;
- cases relating, in particular, to mechanics, are assigned to the section of the central division located in Munich; and
- cases relating, in particular, to human necessities with the exception of SPCs, are assigned to the section of the central division located in Milan.
The central division in Milan replaces the section originally planned for London, prior to the UK’s exit from the European Union (EU).
Each State that has ratified the UPC Agreement may also create one or more local divisions on its territory or participate in the establishment of a regional division, common to several participating States.
Thirteen local Divisions had already been set up (in Vienna in Austria, Brussels in Belgium, Copenhagen in Denmark, Helsinki in Finland, Paris in France, Düsseldorf, Hamburg, Mannheim and Munich in Germany, Milan in Italy, Lisbon in Portugal, Ljubljana in Slovenia, and The Hague in the Netherlands), as well as a Nordic-Baltic regional division with its seat in Stockholm (Sweden).
The cases are distributed on the basis of the competence of the different local and regional divisions.
What are the rules of competence of the divisions of the UPC Court of First Instance?
The central division of the Court of First Instance has exclusive competence to deal with actions of revocation of patents on the main action and actions for declarations of non-infringement, unless an infringement action between the same parties and relating to the same patent has previously been brought before a local or regional division. The section of the competent central division (Paris, Milan or Munich) depends on the technical field of the invention.
The local divisions of the Court of First Instance have exclusive competence to deal with infringement actions, actions for protective measures and actions for damages, as well as counterclaims for revocation.
In the case of infringement actions, there is a jurisdictional option available to plaintiffs which depends on:
- the place of infringement; and
- the place of residence or business of the defendant(s).
If the Court of First Instance has no local or regional division that is competent within the relevant territory, the action is to be brought before the central division.
In short, in some cases, plaintiffs on the main action may be able to choose between different divisions of the Court of First Instance.
What is the composition of the UPC panels?
The panels of the Court of First Instance and the Court of Appeal have a multinational composition, and are composed of judges from the States that have ratified the UPC Agreement.
The panel’s composition differs according to the division of the UPC before which the action was brought:
- in the case of the central division of the Court of First Instance, as a general rule, the panels consist of 2 legally qualified judges and 1 technically qualified judge in the relevant field;
- in the case of the local and regional divisions of the Court of First Instance, the panels consist of 3 legally qualified judges. At the request of one of the parties or of the panel, 1 technically qualified judge may be assigned to the panel. 1 technically qualified judge is also assigned to the panel, if the panel has to decide on a counterclaim for revocation; and
- in the case of the Court of Appeal, as a general rule, the panels consist of 3 legally qualified judges and 2 technically qualified judges in the relevant field.
In short, having at least 1 technically qualified judge is always provided for or possible, especially when dealing with a revocation issue.
What is the language of proceedings?
Before the central division, the language of proceedings is that of the patent in suit. However, under certain conditions, a defendant may request for translations of relevant documents in the language of the State that has ratified the UPC Agreement where such defendant has its residence or principal place of business.
Before the local divisions, the language of proceedings is the official language or one of the official languages of the State having ratified the UPC Agreement hosting the local division.
The regional divisions may choose one or more of the official languages of the States that have ratified the UPC Agreement corresponding to that division.
In addition, the local or regional divisions may designate English, French and/or German as another language of proceedings.
With the agreement of the parties or at the request of one of the parties and after having heard the other party, the panel of the relevant local or regional division may decide to use the language of the patent in suit as language of proceedings on grounds of fairness and convenience.
Before the Court of Appeal, the language of proceedings is the language of proceedings before the Court of First Instance. However, with the agreement of the parties, the Court of Appeal may decide to use the language of the patent as the language of proceedings, or in exceptional cases, another official language of a State that is a party to the UPC Agreement, for the whole or part of the proceedings.
In short, the language used generally depends on the (central, local or regional) division of the Court of First Instance before which the dispute is brought. In particular, using the language of the patent is either mandatory (central division) or possible (local or regional division or Court of Appeal).
What about Court fees?
Court fees must be paid at the outset of the dispute, but shall ultimately be borne by the unsuccessful party.
Such Court fees depend on the legal case and on its importance. They can be either fixed fees, or fixed fees and variable fees, the latter being value-based fees.
The table below takes up the amount of Court fees in respect of the main actions that may be brought before the UPC:
Micro-enterprises and small enterprises are entitled to a 40% reduction in court fees.
Any reasonable and proportional legal costs, including, but not limited to, representation costs, shall be borne by the unsuccessful party, up to a ceiling set by the Rules of Procedure of the UPC, unless equity requires otherwise.
Table of Court fees – Decision of the Administrative Committee of 8 July 2022
Who can represent the parties before the UPC?
Before the UPC, the parties may be represented:
- either by lawyers authorised to practice before a court of a State that has ratified the UPC Agreement; or
- by European Patent Attorneys who are entitled to act before the EPO and who are entered on a list of attorneys entitled to represent parties before the UPC.
BEAU DE LOMENIE has many representatives entitled to represent you before the UPC with expertise in all technical fields.
Is it be possible to have access to the files of the actions brought before the UPC and to the decisions made by the UPC?
Once personal data and confidential information have been removed from the decisions and orders made by the UPC and which are to be published, public access wil be allowed.
The written pleadings and documents filed by the parties at the UPC in the context of disputes, are available only upon reasoned request to the Registry, and agreement by the judge-rapporteur, after consulting the parties and deleting any personal data and confidential information.
The list of cases brought before the UPC can be found on the electronic Case Management System (CMS).
How can documents be exchanged before the UPC?
Before the UPC, submissions are exclusively filed electronically, through the UPC’s electronic Case Management System (CMS).
Using the CMS requires an improved authentication system.
Opt-out
What is an opt-out?
An opt-out is a request to opt out from the exclusive competence of the UPC.
Before the entry into force of the UPC agreement only the national courts had competence to hear actions for infringement and revocation of European patents. From now on, the UPC alone has sole jurisdiction to rule on these issues for unitary patents and, in time, will also have sole jurisdiction for traditional European patents.
However, during a transitional period, the national courts will remain competent along with the UPC for infringement and revocation of classic European patents. Proprietors of European patents without unitary effect shall be able to avoid the competence of the UPC by filing a request for opting out, commonly referred to as an opt-out. You can file an opt-out up to one month before the end of the transitional period, allowing you to opt out from the competence of the UPC throughout the lifetime of the relevant title. This possibility is not available for unitary patents, which fall exclusively under the competence of the UPC in infringement and revocation matters.
In short, if you want your European patent without unitary effect to avoid the competence of the UPC, you must file an opt-out.
Which titles are concerned with an opt-out?
The opt-out can be requested for:
- published European patent applications;
- classic European patents in force or expired; and
- SPCs granted for a product protected by a classic European patent,
provided that no court action has been brought before the UPC prior to the opt-out.
An opt-out requested for a patent application shall automatically apply to the patent stemming from that application. Unitary patents fall under the exclusive competence of the UPC from the moment said Court becomes operational and cannot be the subject of an opt-out.
Why request an opt-out?
An opt-out is requested in order to exclude the competence of the UPC, and thus to make only the national courts competent to deal with infringement and revocation actions relating to a European patent application or a classic European patent. This also applies to any SPCs based on such a European patent.
For all the countries that have ratified the UPC Agreement, a major advantage of opting out for European patent proprietors is that their patents shall not be at risk from a central revocation in the UPC.
In short, where an effective opt-out is concerned, the proprietor of a European patent shall not be able to bring a centralised action before the UPC, in case of infringement acts extending over several territories under the UPC’s competence. Infringement actions shall thus have to be brought before national courts. Moreover, it shall no longer be possible, after an action has been brought before a national court, to withdraw the opt-out in order to benefit from the UPC system at a later date.
Who can request an opt-out?
Opt-out requests must be filed by the applicant(s) of a published patent application or by the owner(s) of the European patent without unitary effect.
If there are several co-owners, they must file the opt-out request jointly.
In the event of no complete and accurate identification of the real owners of the patent application or of the relevant European patent, the opt-out entered in the register would not be valid and would therefore have no effect on the exclusion from the competence of the UPC.
“You can consult one of our experts to determine the chosen approach to request an opt-out (or opt-in) in case of co-ownership and license agreements.”
Until when can I request an opt-out?
You can file an opt-out request up to one month before the end of the transitional period.
How do I request an opt-out?
For a title in co-ownership, an opt-out request must be made by the real owners of the European patent application or of the relevant European patent, or indeed of the SPC(s) granted on the basis of said European patent, and, if applicable, by all the real owners. The real owner(s) need not have been previously entered in the European or national registers in order to request an opt-out. The opt-out request may be made by a representative who may be a lawyer authorised to practice before a court of a State that is a party to the UPC Agreement, a European patent attorney entitled to act before the EPO and who is entered on a list of representatives entitled to represent parties before the UPC, or any other person with a mandate to request the opt-out.
No fee is required for requesting an opt-out.
The opt-out request is filed via the UPC’s electronic case management system (CMS).
What are the conditions that must be met for an opt-out request to have effect?
Before it is entered in the register, an opt-out request is not subject to any verification or control by the Registry of the UPC. No action involving the title in respect of the opt-out request must have been brought before the UPC before the date of entry of the opt-out in the register. Otherwise, the opt-out request is ineffective. The fact that the action brought before the UPC has been completed is irrelevant and such an action equally blocks any further request to opt out.
In short, in order for an opt-out entered in the register to be valid, and therefore to have effect, the request must have been filed in compliance with the applicable rules relating to the relevant title, to the content of the opt-out request and to the requesters.
What is the territorial scope of the opt-out?
Proveded that the conditions applicable to the opt-out request are met, the opt-out is effective in all the States covered by the patent application or for which the European patent has been granted. Thus, the territorial scope of the opt-out shall not be affected by the date of ratification or signature of the UPC Agreement by a State.
Can an opt-out be withdrawn? What is an opt-in?
Yes, you can withdraw an opt-out at any time by making a request to withdraw the opt-out, commonly referred to as an “opt-in”. However, in order for the opt-in to be effective, the title to which the opt-in relates must not, at the date of entry of the opt-in in the register kept by the Registry of the UPC, be subject to an action commenced before a national court in a matter over which the UPC also has jurisdiction.
An opt-in request may be filed at any time, including after the end of the transitional period. There is no fee for requesting an opt-in.
In short, the requirements for an opt-in request to be validly filed are the same as for an opt-out. As with an opt-out, compliance of the opt-in request is not checked before the opt-in is entered in the register kept by the UPC. Thus, the opt-in shall take effect on the date of its entry in the register, if it has been validly filed.
Can a further request to opt out be made after an opt-in?
No.
Once an opt-in has been entered in the register, the relevant title can no longer be subject to a further opt-out.
Thus, where an opt-in satisfying the requirements of validity is entered in the register, the competence of the UPC and of the national courts is frozen in time. During the transitional period, the relevant title may be subject to actions for infringement and revocation either before the UPC or before the national courts. After the expiry of the transitional period, it shall definitively fall under the exclusive competence of the UPC.
When does an opt-out or opt-in have effect?
An opt-out shall take effect upon its entry in the register kept by the UPC, provided that the opt-out request meets the necessary requirements.
You can request a correction of an opt-out request. The correction is then entered in the register of the UPC. In this case, the opt-out takes effect on the date of entry of the correction in the register.
On the date of entry into force of the UPC Agreement, any opt-out requests filed during the sunrise period are considered as entered in the register kept by the UPC at the date of entry into force of UPC Agreement, namely 1 June 2023.
Can an unauthorised opt-out or opt-in be removed from the UPC register?
Yes.
Since there is no control procedure for an opt-out or opt-in request before it is entered into the register kept by the UPC, any opt-out or opt-in that has been entered may have been filed without the authorisation of the real owner(s) of the relevant title. This could be the case of fraudulently or mistakenly filed opt-out or opt-in requests.
In such cases, the real owner(s) of the relevant title may make a request to remove the unauthorised opt-out or unauthorised opt-in from the register. The reasons for this request for removal must be specified and are examined by the UPC Registrar. Third parties are informed that such a request is under examination as it is being marked in the register of the UPC. If the UPC Registrar considers the request acceptable, the relevant opt-out or opt-in is removed from the register kept by the UPC and any subsequent opt-out or opt-in request shall not be affected thereby. If the Registrar rejects the request for removal, an application for review can be lodged before the President of the Court of Appeal of the UPC within one month of the Registrar’s decision to reject.
Is it possible to request the unitary effect of the European patent in the case of an opt-out for a patent application?
The opt-out of a European patent application shall not preclude a request for unitary effect of the patent after the grant of the corresponding European patent.
Specifically, when a unitary effect is obtained after the grant of a European patent, an opt-out previously filed for the corresponding European patent application shall be deemed to have been withdrawn.
Are there specific opt-out and opt-in provisions for SPCs?
No.
The approach to opt-out and opt-in shall be the same for a classic European patent and for the SPCs attached thereto.
Thus, actions brought before the UPC (making any subsequent opt-out impossible) and actions brought before national courts (making any subsequent opt-in impossible) shall have an effect on the European patent application and the relevant European patent, as well as on any SPCs stemming therefrom.
The following points should be noted:
- If a unitary effect is obtained for a European patent, benefitting from the opt-out for an SPC based on said unitary patent is not possible, even though SPCs based on unitary patents are still national titles, to date.
- If an SPC has been granted at the date of filing of an opt-out or opt-in request, the SPC holder, if different from the proprietor of the classic European patent, must appear as the opt-out or opt-in requester together with the proprietor of the classic European patent.
- If an SPC has been granted after the date of filing of an opt-out or opt-in request, the opt-out or opt-in shall automatically take effect for said SPC, upon grant of the SPC, in the same way as for the classic European patent.
What opt-out and opt-in information is entered in the register kept by the UPC?
Opt-outs and opt-ins entered in the register kept by the UPC are available for consultation via the electronic case management system (CMS) of the UPC.
If an opt-out or opt-in request is corrected, the date of the correction, which is the effective date of the opt-out or opt-in, is entered in the register.
Requests for removal of an opt-in or opt-out filed by an unauthorised requester upon which the UPC Registrar must decide are also entered.
Any opt-outs or opt-ins entered for a European application or patent or a portfolio of European applications or patents can also be monitored in the UPC register.
In short, such monitoring is of interest both with respect to competing patents and to a proprietor who wants to ensure that no unauthorised opt-outs or opt-ins have been filed for one of its patents or on its portfolio.