The Unified Patent Court (UPC) will be a patent court common to most EU countries, and will form part of their judicial systems. Eventually, for the relevant EU countries, the UPC will have exclusive competence in respect of all European patents – this will include new Unitary Patents, as well as nationally-validated “bundle” European patents (bundle EPs).

So, if you have European patents or are involved in European patent litigation, the UPC is relevant to you.

Following Germany's ratification of the UPC Agreement, the UPC will open its doors on 1 June 2023.

Any EU country can sign up to the UPC Agreement and, so far, all EU countries except Spain, Poland and Croatia have signed the Agreement. This means that the UPC could potentially have jurisdiction over European patents in 24 EU countries.

However, in order for the UPC to have jurisdiction in a given country, that country also needs to ratify the UPC Agreement. 17 EU countries have ratified the UPC Agreement at the time of writing (1 March 2023), namely Belgium, Bulgaria, Denmark, Estonia, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden. Ratification by Germany is necessary for the UPC Agreement to come into force, so this will bring the total number of countries within the jurisdiction of the UPC to at least 17 when the UPC finally comes into force.

By default, your existing European patents will fall under the jurisdiction of the UPC as soon as this new court opens its doors on 1 June 2023. This means that a competitor could start a central revocation action at the UPC against any of your existing European patents, even if they are well past the 9-month EPO opposition window. Whilst such an action would not impact the UK part of your European patent, it could be a very cost-effective way for a competitor to try to revoke your European patent in a lot of EU countries. If you would prefer to avoid the possibility of central revocation of your existing European patents at the UPC, it will be possible to actively opt out your patents from the jurisdiction of the UPC.

Regarding any pending or new European patent applications, these will also fall under the jurisdiction of the UPC on grant. Again, it will be possible to opt out particular applications from the jurisdiction of the UPC if desired.

You will also have new validation options available on allowance of any European patent applications that are pending when the UPC comes into force on 1 June 2023. It will continue to be possible to elect individual validation countries so as to obtain a bundle of separate patents in those countries (referred to here as a “bundle EP”). However, alongside this, the UPC will provide the new option of obtaining a Unitary Patent, which will cover multiple EU countries and will fall under the exclusive jurisdiction of the UPC. It will also be possible to proceed with a mix of the two approaches, e.g. obtaining a Unitary Patent, as well as validating separately in the UK, Switzerland and Norway. An important point to note is that a Unitary Patent cannot be opted out of the jurisdiction of the UPC.

Opting-out enables a patent owner to actively remove their European patent from the jurisdiction of the UPC so that the European patent instead remains under the jurisdiction of the relevant national courts. It will only be possible to opt out during a transitional period of the UPC, which will last at least 7 years. However, such opt-outs will usually be effective for the whole life of the patent.

Importantly, only bundle EPs can be opted out of the jurisdiction of the UPC. It is not possible to opt out a Unitary Patent from the jurisdiction of the UPC – Unitary Patents fall under the exclusive jurisdiction of the UPC by definition.

An opt-out is effective for all states for which the bundle EP was granted, so it is not possible to opt out only for particular countries in the bundle. However, it is possible for a patent holder to withdraw an opt-out at any time should they wish to do so (unless the European patent has been the subject of national litigation in the meantime). Having withdrawn an opt-out, the bundle EP would then fall within the jurisdiction of the UPC for any subsequent disputes.

Opt-outs can now be filed during a 3-month "sunrise period" prior to the UPC opening its doors. This initial 3-month period is intended to give patent owners time to opt out their patents before competitors are able to start central revocation actions against them at the UPC.

If you are interested in opting out your European patents, please contact your usual advisor at Boult Wade Tennant.

It is currently possible to oppose a European patent centrally at the European Patent Office (EPO) so long as the opposition is filed within 9 months of the date of grant of the patent. If successful, an EPO opposition can lead to revocation of the European patent in its entirety (i.e. across all validation countries).

Once the UPC becomes operational on 1 June 2023, it will still be possible to file an EPO opposition if desired. However, for European patents which have not been opted out, the UPC will provide an additional choice of forum for revocation actions. This will be of particular interest in cases where the 9-month EPO opposition window has already passed. However, revocation via the UPC would not affect the European patent in countries outside the coverage of the UPC (e.g. the UK). Furthermore, a revocation action before the UPC is expected to be significantly more expensive than an EPO opposition. Therefore, EPO oppositions will remain immensely valuable tools when looking to invalidate competitor patents.

The term “Unitary Patent” is shorthand for “a European patent with unitary effect”. In other words, a Unitary Patent is a single, unitary patent right which covers multiple EU countries.

As a unitary right, a Unitary Patent may only be assigned or renewed as a whole, and such matters will be managed by the European Patent Office (EPO). This will certainly simplify post-grant administration of European patents, but it will also remove the option for a patent owner to stop paying renewal fees in specific jurisdictions if the patent turns out to be less valuable in those jurisdictions.

Once the UPC has become operational on 1 June 2023, Unitary Patents will become available via the European Patent Office (EPO). Specifically, a Unitary Patent will be obtainable by filing a request for unitary effect at the EPO within one month of grant of a European patent. Therefore, this will be an option for European patent applicants to consider alongside their decisions on European patent validation countries. Boult Wade Tennant will be able to file requests for Unitary Patents as part of our comprehensive European services.

The request for unitary effect will not require payment of an official fee at the EPO. However, it will be necessary to file a translation of the European patent. In particular, for English language European patents, a translation into any other official language of the EU will be required. Alternatively, for French or German language European patents, a translation into English will be required. The requirement to submit translations will be reviewed after 6 years, and may be removed depending on the availability of high quality machine translations at that time.

In very limited circumstances, it will not be possible to obtain a Unitary Patent. In particular, a request for unitary effect will be refused when the European patent has not been granted with the same set of claims in all of the countries participating in the Unitary Patent regime. However, such cases are few and far between.

Any EU country can participate in the Unitary Patent regime and, so far, all EU countries except Spain and Croatia are involved. This means that a Unitary Patent could potentially cover 25 EU countries.

However, the territorial scope of a particular Unitary Patent will be defined by the ratification status of the UPC Agreement on the date that the EPO registers that patent for unitary effect. 16 EU countries have ratified the UPC Agreement at the time of writing (1 February 2023), namely Belgium, Bulgaria, Bulgaria, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden. Ratification by Germany is necessary for the UPC Agreement to come into force, so this will bring the total number of countries cover by a Unitary Patent to at least 17 when the UPC finally comes into force.

In short, the UK will be generally unaffected by the new UPC and Unitary Patents.

Since the UK is not part of the EU, the UK will not be one of the countries covered by a Unitary Patent. Nonetheless, it will remain possible to obtain UK patent protection via a European patent application filed at the European Patent Office (EPO). This will simply involve validating a granted European patent in the UK, just as we do now, so business as usual!

In addition, there will be no change in terms of litigation of European patents in the UK. The UK courts will continue to have jurisdiction over European patents that have been validated in the UK.

The UK is not the only country in this position – there are a number of other EPC Contracting States which are not part of the EU. These are Albania, Switzerland, Iceland, Liechtenstein, Monaco, North Macedonia, Norway, Serbia, San Marino, and Turkey. Therefore, just like for the UK, these countries will not be covered by Unitary Patents, and their national courts will retain jurisdiction over locally-validated European patents.