Unless you have been living under a rock, you will know that the Unified Patent Court (UPC) has now had its doors open for two years. It is not going away and, for those less familiar with the system (and who, by now, ought to become more familiar!), I dispel some perhaps common misconceptions in relation to the UPC and the unitary patent (UP) below. For those who are (at least vaguely) familiar, please use the guide as a nice refresher and “sanity check” of your understanding.
What follows is a non-exhaustive list of misconceptions and false assumptions, followed by a brief explanation of why they are not (necessarily) true.
A UP covers all EPC contracting states
Not true. However, granted, the situation is complex, especially for those not so familiar with the European patent system. In simple terms, there are three groups of the 39 EPC contracting states:
- EPC contracting states that are not members of the EU, such as the UK and Switzerland. A UP will not cover those states.
- EPC contacting states that are members of the EU and have signed and ratified the UPC agreement. The UP will cover these states. There are currently 18 of such states.
- EPC contacting states that are members of the EU, but have not (yet) signed and ratified the UPC agreement (such as Spain and Ireland). A UP will not currently cover these states. However, future UPs could cover these states should the state (sign and) ratify the UPC agreement.
This “grouping” of states will be used throughout this article, for ease of reference. Further detail can be found here or here, for example.
I need to file a separate “unitary patent application” to obtain a UP
This is not true. The route to obtaining a UP is the same as that for obtaining any other nationally validated European patent. That is, a European patent application is filed and prosecuted at the EPO in the usual manner, i.e. through your usual European Patent Attorney contact. Once the European patent is granted, you may register for unitary effect to obtain a UP within one month of the publication of the mention of grant of the European patent. Thus, the decision does not need to be made on filing of the European patent application.
I can reduce the territorial scope of my UP later down the line to save costs, such as by “converting” it into a number of European national patents covering fewer states
This is not possible. It is also not possible to “convert” a bundle of European national patents into a UP. A UP is a single, indivisible patent right that may only be renewed, limited, transferred, revoked, or lapse, in respect of all the member states covered by the UP.
The UP is a single, indivisible patent right, so I can only licence it for all jurisdictions or none
No. While the UP can only be transferred as a whole, it could be licenced to a different licensee in each jurisdiction, or be licenced in a select number of jurisdictions.
The nationally validated European patent will become obsolete in light of the UP
Certainly not true. You will still be able to choose between registering for unitary effect and validating the European patent in one or more of the EPC contracting states in group (2) above. Of course, you may also wish to obtain protection in EPC contracting states of group (1) and/or (3) above by validating the European patent in those states.
However, it should be borne in mind that after the end of the transitional period (currently from 1 June 2030, but may be extended) the UPC will have exclusive jurisdiction over both UPs and “classical” nationally validated European patents in EPC contracting states in group (2) above, unless already “opted out” (i.e. it will no longer be possible to “opt out” of the UPC for such European patents from this date). Accordingly, in the long term, it will not be possible to avoid the jurisdiction of the UPC in those jurisdictions, whether or not you request unitary effect.
UPs are not worth the money
There is, as always, a balance of factors to consider here. For example, a general rule of thumb is considered to be that registering and maintaining a UP may be more cost-effective than validating and maintaining a corresponding bundle of nationally validated European patents if you are considering validating in four or more group (2) states. Moreover, of course, the jurisdictional protection provided by a UP will be far greater if you are considering validating in only, say, 4-10 group (2) states (the UP currently covers 18 states). However, as discussed above, the UP is a single, indivisible patent right that may only be renewed (by a single fee each year) in respect of all the member states covered by the UP. Thus, it is not possible to save costs towards the end of the patent term by only renewing in a select number of states; it’s all or nothing.
Another factor to consider is central revocation. A UP is more vulnerable to revocation due to a prejudicial national prior right than a corresponding bundle of nationally validated European patents. That is, where a national patent application (such as a direct German patent application, for example), has an earlier priority (or filing) date than the European patent, but was published on or after the priority (or filing) date of the European patent:
- For a “classical” bundle of nationally validated European patents, the national patent application will be novelty-only prior art for only the national European patent validated in that jurisdiction. If the document is novelty destroying, only the national European patent in that jurisdiction will be vulnerable to revocation. The remaining patents in the bundle are unaffected as the document is not citeable against those designations.
- For a UP, however, the national patent application will be novelty-only prior art for the entire This means that if a prejudicial national prior right becomes known, the UP proprietor’s rights may be revoked in all states covered by the UP.
In other words, if you are intending to validate in a number of group (2) states and intend to renew the UP for the majority of the patent term, then the cost savings can be significant. However, there are risks.
For multi-jurisdictional issues, we will still have to litigate in the non-UPC European national courts even if we are successful at the UPC, so what is the saving?
Perhaps not according to the UPC judges… We are still in the early states of the UPC and case law is still developing. However, as discussed in more detail in our bulletin here, recent decisions are pointing to the fact that the UPC considers itself competent to decide on infringement and validity for all parts of a European patent where a defendant is domiciled in the EU. This includes European patents validated in non-UPC states such as Spain and non-EU states such as Switzerland and the UK, though the UPC cannot legally revoke these patents. Moreover, the UPC considers these decisions binding on the parties litigating the action before the UPC. However, this is yet to be tested at the relevant non-UPC states’ national courts.
Surely the UPC won’t be that efficient?
Early statistics in the UPC’s first annual report show that infringement and revocation actions took, on average, around 380-405 days (i.e. about 13 months) to close. Applications for provisional measures under RoP192 (application for preserving evidence – Saisie) were as quick as 25 days, on average. While, of course, it is still early days in the life of the Court, this is promising for the Court’s aim of delivering efficient litigation in Europe.
Only EU litigators will be involved in UPC litigation and UK-based patent attorneys will have no involvement in the UPC in a post-Brexit Europe
This is not true. Parties must be represented by (i) a lawyer authorized to practice before a court of a contracting member state or (ii) a European Patent Attorney who has the appropriate qualifications, which includes UK-based European Patent Attorneys (EPAs) with the appropriate qualifications. Boult’s team of UPC representatives can be found here, for example. Moreover, there can be great benefit in having a broad team representing you in UPC proceedings, including UK and German EPAs, for instance. Our article on crafting the best team for your UPC litigation can be found here.
In addition, recent UPC case law appears to suggest that the UPC may be be applying analogous tests to those established by the EPO Boards of Appeal, meaning that those with experience at the EPO, in particular in opposition and appeal hearings, may be of great benefit in proceedings before the UPC.
EPO oppositions will become less important now the UPC caseload is increasing
Not at all. EPO oppositions still offer the same, relatively cheaper, option to centrally attack a European patent within 9 months of grant. Moreover, the decision of the EPO Opposition Division will be effective in all EPC contracting states. In the event of parallel EPO and UPC proceedings, the Court may of its own motion – or at the request of a party – request that opposition proceedings before the European Patent Office be accelerated. On the other hand, it is also within the powers of the Court to stay the UPC proceedings while the EPO proceedings conclude. However, as in the recent decision of the Milan Local Division of the UPC’s Court of First Instance, the Court alternatively granted a request for an extension to the deadline for the defendant to file a statement of defence (and counterclaim for revocation) in infringement proceedings until after the date of the corresponding EPO Board of Appeal hearing. This highlights the continued importance of EPO oppositions, and the UPC’s willingness to take a logical and pragmatic approach to parallel proceedings, prioritising efficiency. For more detail, see our bulletin on this case here.
Since the UK is not a UPC state, the language of proceedings in UPC cases is likely to be German or French
Again, not true. The most recent statistics up to 30 April 2025 show that English was the language of proceedings in actions before the UPC Court of First Instance in 55% of cases, followed by German at 38%.
Clients are typically being cautious, opting out and not using the UPC
This is not necessarily true. At Boult, our team already have a considerable success record in advising clients on UPs and before the UPC. The most recent statistics up to 30 April 2025 show that, since the UPC opened its doors on 1 June 2023, the Court of First Instance has received a total of 836 cases.
For more insights about the Court and the UP system, read the latest from our team here. You can also register for our UPC newsletter to receive notifications when our insights are published. Contact a member of our UPC Team today.
