Ready for the unitary patent and the UPC
With SONN's experts
On June 1, 2023, the Unified Patent Court (UPC) officially launched. It is now possible to obtain European patents with unitary effect ("unitary patents") and to bring actions before the UPC.
The unitary patent can lead to savings in patent costs in many cases. At the UPC, infringement and revocation proceedings can be conducted centrally for currently 17 EU member states. We expect that proceedings before the UPC will lead to timely, high-quality decisions.
SONN not only supports you in obtaining unitary patents, but also will represent you from day one in infringement and revocation proceedings before the UPC.
Daniel Alge has been involved in the development of the UPC for many years, for example in his functions as Board Member of the European Patent Litigators Association (EPLIT) and President of the European Union Members Commission (EUCOF) of the international patent attorney federation FICPI. In addition, he frequently gives lectures on this topic, most recently, for example, at the IP Academy of the Austrian Patent Office. On 5 October 2023 at the FICPI Open Forum in London he will serve as moderator of the UPC session, with judge Klaus Grabinski, chairperson of the UPC Presidium and President of the UPC Court of Appeal, as one of the speakers.
For several years, Rainer Beetz was a member of an expert group advising the European Commission on the conception of the UPC. He is a founding member of EPLIT and gives lectures on the UPC for the legal profession and industry.
Johannes Strobl is an expert in procedural matters before the UPC due to his European Patent Litigation Certificate, which he obtained in a UPC-specific course at the Politecnico di Milano.
Frequently asked questions (FAQ)
The unitary patent (more precisely: "European patent with unitary effect") is a patent with uniform effect in all EU countries participating in the unitary patent system. However, it is not valid in all countries of the EU.
The following 17 EU member states will participate in the Unitary Patent System from the beginning: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Slovenia, Sweden, and Portugal. Further EU member states may follow.
The participation of non-EU countries such as the United Kingdom, Switzerland or Turkey is not planned. However, in a “mixed approach”, it is possible to obtain a unitary patent and to additionally validate the patent nationally e.g., in the United Kingdom, Switzerland and Turkey.
The unitary patent can only be obtained by filing a conventional European patent application. Only after the grant of a European patent a decision has to be made whether a unitary patent should be requested (see: What needs to be considered when a European patent is granted?).
The unitary patent can save patent costs in numerous cases because translation requirements are eliminated and the renewal fee is collected centrally by the European Patent Office after the patent has been granted.
The unitary patent can only be transferred or renewed as a single unit. Although this simplifies post-grant administration, a patent proprietor will not be able to save on renewal fees in certain member countries, for example, if the patent is not considered worth maintaining in those member countries ("pruning").
As a unitary right, the unitary patent can also be challenged centrally via a single revocation action at the UPC over the entire term.
No, the European patent will not be replaced by the unitary patent. The unitary patent is part of the European patent system, so the path to the unitary patent starts with a European patent application at the European Patent Office. Until the European patent is granted (i.e., during the grant procedure) everything remains as before. After grant, however, it is now possible to file a “request for unitary effect" in order to obtain a unitary patent in addition to the classic "validation" in countries not participating in the unitary patent system.
A granted European patent can have a legal effect in the following countries:
For the 17 EU member states in the highlighted column on the left in the table, unitary effect (the "unitary patent") can be requested within one month of grant. For the European patent to retain its effect in the other states listed in the table, it must be validated nationally within three months, as previously.
As an alternative to requesting unitary effect, it is also possible to validate the European patent nationally only in a selection of the states participating in this system. With respect to costs this may be a reasonable option if validation is desired in less than four states participating in the unitary patent system.
The cessation of many translation requirements is a major advantage of the unitary patent system. Only an English translation is required if the patent is in German, or a translation into another official language of the EU (e.g. German or Spanish) if the patent is in English. For most international patent prosecution strategies, an English or Spanish translation has already been prepared anyway as part of the PCT nationalizations, so there are usually relatively few additional costs to be expected.
For all European patents granted on or after 1 June 2023. Therefore, it is also possible to obtain a unitary patent for pending European patent applications.
The Unified Patent Court (UPC) is an independent court created to decide on the infringement and validity of unitary patents as well as “conventional” European patents ("bundle patents"). Decisions of the UPC are recognized in all participating countries. The panels of the UPC are multinational in their composition and consist of legally and technically qualified judges. The proceedings before the UPC are structured in such a way that a first-instance decision can be expected within one year of the filing of an action.
The UPC is legally a single court, but it will have different divisions located in different EU member states. These divisions will be responsible for different geographic areas and will hear cases in first instance.
The national courts of the member states continue to be competent for national patents and utility models.
The UPC is decentralized and consists of a central division (with seats in Paris and Munich) and several local and regional divisions in the member states. The local division for Austria is located in Vienna. The court of appeal has its seat in Luxembourg.
European patent applications were already (centrally) examined by the European Patent Office. However, after grant a European patent was divided into national, independent patents ("bundle patent"). Although oppositions to a granted European patent could always be filed centrally with the European Patent Office within nine months, subsequent disputes (both over infringement and invalidity) had to be settled in national courts. Cross-national litigation was potentially costly and could have lead to different results in different jurisdictions. The UPC was created to put an end to the "patchwork" in the enforcement of European patents.
The UPC will provide fast and efficient proceedings for all participating member states, which will be conducted by international qualified judicial panels. Its distinguished members are expected to provide high-quality decisions both from a legal and technical point of view. In the longer term, EU-wide legal harmonization can also be expected with regard to the enforcement of patents.
The costs of proceedings before the UPC will generally be significantly higher than the costs of Austrian proceedings - in return, however, the decisions of the UPC are valid in 17 EU member states.
The main types of actions that can be brought before the UPC are the action for infringement and the action for revocation of a unitary patent (also possible after an opposition at the European Patent Office). In addition, other types of actions are possible, such as an action for declaration of non-infringement or an action for an injunction against an alleged infringer.
Depending on the type of action, the identity of the parties involved, the place where the cause of action occurred, and the subject matter of the unitary patent, it is decided whether proceedings in the first instance will take place before the central division (and, if so, in which seat) or a specific local or regional division.
For infringement actions, generally the residence of the defendant is decisive (e.g., Austrian companies can be sued for patent infringement before the Austrian division). The central division is competent for revocation actions.
Depending on the division, different procedural languages are used. The language in which the unitary patent was granted (German, English or French) constitutes the language before the central division. Before the local and regional divisions, in contrast, proceedings are generally conducted in one of the official languages of the member state in which the division is located.
Yes, it is mandatory to be represented before the UPC by attorneys with appropriate qualifications. Attorneys at SONN are qualified to act as representatives before the UPC from the very beginning (see “Our experts”).
In principle, yes, because apart from the unitary patent, with the start of the UPC the national parts of "classical" EP bundle patents in the participating states also fall under the jurisdiction of the UPC.
However, for conventionally validated EP bundle patents there is the possibility to opt-out the national parts from the jurisdiction of the UPC (as long as no action has been filed with the UPC). In this case, the respective national court is then responsible - as has been the case previously. To ensure that patent proprietors of existing EP bundle patents are not forced into the jurisdiction of the UPC against their will, patent proprietors may opt-out of the UPC jurisdiction. Such an opt-out always covers all national parts of the EP bundle patent and - in case of several patent proprietors - must be requested jointly. An essential aspect of an opt-out is that it can also be withdrawn as long as no action has been brought before a national court.
No, this is only possible if the European patent has been validated nationally in the conventional manner.