The “unitary effect” of the “European Patent with Unitary Effect”

As the Unified Patent Court (UPC) and the “European patent with unitary effect” according to the agreement on a Unified Patent Court (UPCA) will become reality soon, applicants/patentees need to deal with the question of whether a unitary effect for their patents is desired or not. This may in particular relate to the question of whether to opt out (some of) their classic European patents from the Unitary Patent System.

But what exactly is the “unitary effect”? In the following, the character and scope of this “unitary effect” is explained in detail:

What is the Unitary Patent?

The European Patent Office (EPO) has been responsible for the examination and granting of European patents (EP), providing a bundle of national patents after grant. The EPO will now also be responsible for the examination and granting of European patents with unitary effect (UP). The same examination proceedings before the EPO may lead to the (classical) EP or the (new) UP.

Upon entry into force of the UPCA, within one month from the date of the publication of the mention of the grant, the patentee can request a (new) UP instead of the classical EP. For a UP, a requirement is that all EU member states participating in the UPCA were designated for the underlying EP application.

The EPO has implemented a user-friendly mechanism for patentees in that for the three-month period between Germany having deposited its instrument of ratification and the UPCA entering into force, a delay in issuing the EPO’s decision to grant (and of the date of the publication of the mention of the grant) may be requested, so as to give the patentee, for applications intended for grant by the EPO already shortly before the start of the UPC, the possibility to obtain a UP rather than an EP.

Unlike for an EP, the patentee of a UP needs to pay a single renewal fee to the EPO for all participating EU member states, in particular under a single legal regime as regards deadlines and admissible means of payment.

What is the Unitary Effect?

The key feature of the new UP is its unitary character, which provides uniform protection with equal effect in all participating EU member states:

Uniform protection implicates a single litigation system for all participating EU member states ie for the majority of the European market. The UPC will be the only competent (and joint) court for deciding especially on infringement and validity of a UP. The decisions of the UPC will have uniform effect in the whole territory of all participating EU member states, be it injunctions and damages for patent infringement or revocation of patents.

Equal effect means that the scope of the UP and its limitations are uniform in all participating EU member states by the fact that

• a UP has the same set of claims for all participating EU member states, and that
• a UP can only be limited, transferred or revoked, or lapse in respect of all participating EU member states in their entirety. This is contrary to the (current) national validations of an EP and its resulting individual national patents.

Applicable laws for the UP as an object of property before the UPC will be the national laws of the EU member state in which the (first) applicant had its residence or (principal) place of business on the date of filing of the application for the EP. If no other alternative applies, the laws of Germany as the state where the EPO has its headquarters will apply.

However, when taking a closer look, the unitary effect may not be entirely unitary:

• The scope of the unitary effect of the UP will depend on the EU member states having ratified the UPCA at the time of the registration of the UP. It is expected that the number of participating EU member states will increase with time. However, there will be no extension of the territorial scope of UPs to include EU member states ratifying the UPCA after grant of the UP. Hence, the number of “participating EU member states” is not a fixed number since not all EU member states have expressed the intention to ratify the UPCA or have already done so: at the moment, 17 EU member states will participate in the Unitary Patent system when it starts: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden and further EU member states have already signed and may also ratify the UPCA, namely: Cyprus, Greece, Ireland, Romania and Slovakia.

Generally, the Unitary Patent System is open for all EU member states, but their participation is voluntary (and may often depend on political considerations). However, not all countries which underly the European Patent Convention (EPC) can be covered by way of a UP: Countries which are not part of the EU, such as Switzerland and the UK, cannot participate in the UPCA.

For patent protection in EPC countries that are non-EU member states or EU member states not having participated in the UPCA, the patentee may supplement the UP with the usual national EP-validation for those countries.

• It will be possible for a patentee of a UP to grant a license for the UP in respect of the whole or part of the territories of the participating EU member states. Hence, a license based on a UP does not need to have a “unitary” scope.

Jurisdiction of the UPC for UPs and classical EPs

As of entry into force of the UPCA, the UPC will have jurisdiction for all patents granted by the EPO. This even applies for existing EPs, however, with the following relevant exception:

During the transitional period of seven years (possibly extended to 14 years in total) from the entry into force of the UPCA, (existing and future) classical EPs can be withdrawn from the jurisdiction of the UPC (so-called “opt-out” declaration).

The opt-out ensures that the exclusive jurisdiction for the respective national part remains/is with the respective national courts, i.e. that the patent remains/is a classical EP. The opt-out may be withdrawn under certain circumstances at a later date again ("opt-in"). If you are interested, please read more about the opt out here and here.  

If no opt-out has been declared, parties can choose between the UPC and national courts for their legal actions – also parallel legal actions before the UPC and national courts are possible.

For existing EPs or EPs granted within the transitional period, in principle, the patentee has the possibility to choose between the jurisdiction of the UPC or the existing national courts.

However, once the decision for a UP has been made, the UP must be litigated in the UPC and cannot be opted out.