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Boult’s UPC team, led by Matthew Spencer and James Legg, was recognised by a win in the MIP Europe Impact Case of the Year category for our work in the legal team representing Molecular Instruments in Advanced Cell Diagnostics v Molecular Instruments. Learn more about this landmark case here.

The UPC may be a new forum, but our UPC team draws upon decades of experience of contentious matters before the Boards of Appeal and Opposition Divisions of the EPO. The substantive law applied by the UPC closely mirrors that of the EPO and is interpreted in largely the same way. Boult has an enviable record of success at the EPO and applying that expertise at the UPC has been immediately successful.

Importantly, our experience of patent disputes extends across all technology areas. At Boult you can find a UPC team with both contentious experience and also deep subject-matter expertise in relevant technical fields.

Our experience at the UPC has emphasised the importance of using local legal knowledge to support our technical expertise. We have built close relationships with a growing selection of trusted local practitioners across important UPC locations to support the substantive advocacy in which we excel. Boult has the flexibility and depth to assemble the best team for your case.

UPC experts

Matthew Spencer
Biotech/life science
Matthew Spencer
Partner Cambridge
Dr James Legg
Biotech/life science
Dr James Legg
Partner Cambridge
Henning Erb
Engineering
Henning Erb
Partner Frankfurt
Dr Simon Kahn
High Tech
Dr Simon Kahn
Partner London
Dr Joanna Peak
Biotech/life science
Dr Joanna Peak
Partner London
Daryl Penny
High Tech
Daryl Penny
Partner Reading
Dr Edward Ronan
Biotech/life science
Dr Edward Ronan
Partner London
Dr Rohan Setna
Chemistry
Dr Rohan Setna
Senior Partner London
Dr James Short
Engineering
Dr James Short
Partner London
Neil Thomson
Engineering
Neil Thomson
Partner Cambridge
Daniel Weston
Chemistry
Daniel Weston
Partner London
Dr Nina White
Biotech/life science
Dr Nina White
Partner London

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Your questions answered

The Unified Patent Court (UPC) is a common patent court for most EU Member States. The UPC offers patent proprietors a powerful forum for patent litigation throughout the EU – allowing cases to be heard quickly and avoiding the expense of launching individual actions in different Member States. The UPC comprises experienced patent judges from all participating Member States of the EU.
The territorial scope of each Unitary Patent is defined by the ratification status of the UPC Agreement on the date that the EPO registers that patent for unitary effect. An up-to-date list of EU Member States that have ratified the UPCA can be found on the UPC website here. The ratified states are those shown as “in force”.
By default, all European patents fall under the jurisdiction of the UPC. During the current transitional period, it is possible to opt out European patents (but not Unitary Patents) from the jurisdiction of the UPC.
Opting-out removes a European patent from the jurisdiction of the UPC so that the European patent instead remains under the jurisdiction of the relevant national courts. It is only possible to opt out during the current transitional period. 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.
It is 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). The UPC does not alter this. It is still possible to file an EPO opposition and indeed an EPO opposition can be run in parallel to a UPC action. The benefit of the UPC is that is provides a powerful additional choice of forum. This will be of particular interest in cases where the 9-month EPO opposition window has already passed. EPO oppositions still remain a highly cost-efficient tool 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 Member States.
A Unitary Patent is obtained by filing a request for unitary effect at the EPO within one month of grant of a European patent.
A Unitary Patent has a broad geographical scope, covering all Member States of the European Union (EU) that have ratified the Unified Patent Court Agreement (UPCA) at the date of registration of the request for unitary effect. An up-to-date list of EU Member States that have ratified the UPCA can be found on the UPC website here. The ratified states are those shown as “in 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 is not one of the countries covered by a Unitary Patent. Nonetheless, it remains possible to obtain UK patent protection via a European patent application filed at the European Patent Office (EPO). This simply involves 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 several 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.

UPC toolkit

Notice: Registering your European patent for unitary effect
Unitary Patents and the Unified Patent Court
Supplementary Protection Certificates and the Unitary Patent/Unified Patent Court; is a Unitary SPC also on the way?
UPC maps
Case study