Unified Patent Court

A Brief Guide to the Proposed European Unified Patent Court (UPC)

What is the Unified Patent Court?

The Unified Patent Court (UPC) is a new centralised European patent court, which will operate in tandem with the UP system. The UPC will enforce and revoke patents across the whole UP group of countries, unlike in the current system where individual European patent validations are enforced and revoked on a country-by-country basis.

Which cases will be dealt with by the Unified Patent Court?

Firstly, the UPC will deal with all patent cases based on UPs. The UPC will handle both infringement actions and revocation actions. National courts will not be able to handle cases involving UPs.

Secondly, the UPC will handle some cases involving European patents granted under the current system, which we will call classical European patents (CEPs). These are essentially bundles of national patents, the individual national parts being referred to as the validations of a CEP. Infringement and revocation actions involving CEPs in the Unitary Patent countries can be dealt with by either the new court system or national courts by default. However, if a CEP is first “opted out” of the UPC system then cases involving that CEP will be dealt with by the national courts only.

What if I don’t want the new court to deal with my existing European patents?

In that case you can opt out of the new court system for a selection (or all) of your existing European patent portfolio. The opted out patents will then be handled by national courts in the same way as under the current system for the lifetimes of the patents concerned. It is best to do this before the UPC system comes into effect to make sure that a UPC action is not started involving one of the patents you wish to opt out, at which point the patent in question is locked into the UPC system. On the other hand, litigation is rare in practice so it will generally be possible to opt out later on.

We can handle the opting out process on your behalf for a small fee if you give us a list of your patents to opt out. We note that the opting out process will be more complex for co-owned patents as all of the co-owners will need to agree. Please let us know if you would like advice on this point.

The start of the period for opting out existing patents will be at least three months before the start of the UP and UPC systems themselves. If you are on our mailing list, we will let you know when opting out will become possible closer to the time. Please contact mail@mskpatents.com if you would like to be added to our mailing list.

When will the Unified Patent Court start?

The Unified Patent Court will start at the same time as the new Unitary Patent system. This is expected to be early in 2023. The actual start date will be announced at least three months ahead of that date, perhaps late in 2022.

Which countries are included?

The UPC will cover the same countries as the UP system. The full list of countries that have agreed to join the UP system is:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden.

Not all of these countries will be covered from the start however. Also, we understand that Poland will not participate in the system for the foreseeable future.

The list of countries that will be covered from the start of the system is:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

What will the effect of the Unified Patent Court be?

The UPC will enable patentees to obtain injunctions and damages covering a much larger market than under the current national court system with a single court action.  However, it will also allow patents to be revoked in multiple countries simultaneously via a revocation action at the UPC.  The new system presents patentees with both opportunities and risks.

It is yet to be seen how patent-friendly the UPC courts will be.  Only time will tell how the decisions of the UPC will differ from the established case law of the various national patent courts, case law which itself varies significantly across Europe.  It is also possible that different local courts of the UPC will differ in their approach, although the existence of a central appeal court should ensure harmonisation over time.  It is intended that patent law will gradually become more uniform and predictable across Europe as a result of the new system.

Given the size of the market covered by the court’s jurisdiction and the flexibility offered by the opt-out, the UPC offers a great opportunity for patentees to enforce their patents more effectively across Europe.

Where will the Unified Patent Court be based?

The UPC will have a Court of First Instance, a Court of Appeal, and a Registry. The Court of First Instance will be composed of a central division and several local and regional divisions. The central division will be split between different countries based on the technical fields of the cases it will hear.

The central division in Munich will hear cases in the field of mechanical engineering and the central division in Paris will hear cases in the fields of electronics, software and physics. Chemical, metallurgical and life sciences cases will be split between Paris and Munich until a new location is established for hearing these cases.

There will be local divisions in at least Germany, France, Italy, the Netherlands, Belgium, Austria, Denmark, Finland, Hungary and Portugal and a regional division based in Stockholm (covering Sweden, Lithuania, Estonia and Latvia).

The Court of Appeal will be located in Luxembourg.

The rules for deciding the appropriate location for hearing a given action are complicated. The basic premise is that the location will be determined based on the type of action, with local and regional divisions hearing infringement actions and the central division hearing revocation (invalidity) actions.

For infringement actions, the local division either will be based on where the defendant is located or will be where the infringement of the patent occurred. Where several appropriate divisions are available, the claimant will be able to choose where to start an action.  Alternatively, if the defendant is not located in a UP country, the claimant will be able to choose the central division. Obtaining good legal advice will be more important than ever when deciding whether to bring an action and in which division.

How should I prepare for the Unified Patent Court?

We recommend deciding in advance which patents you would like to opt out of the UPC system. It would be best to have a list of patents to opt out ready to go when the start date of the UPC and the start of the opt out period are announced. Please let us know if you would like advice on selecting which patents to opt out. This would also be a good time to consider an audit of your European patent portfolio, which we would be happy to assist with.

If any of the patents you would like to opt out are co-owned then it would be best to get in touch with the other co-owners well ahead of time to make sure that they agree with opting the patent out of the UPC system. The same is true for licensees of your European patents. You may wish to review existing licensing agreements with the licensees, agree on whether the patents concerned should be opted out and discuss how those patents should be enforced after the new system begins. We would of course be happy to assist with this review process.

Also, the start of the UPC will offer new opportunities for patent licensing and infringement actions. You may wish to commission searches for potential infringement of your patent portfolio in the UPC region in preparation. We provide this type of searching for a reasonable cost so please get in touch if you would like a quotation. Please contact us at mail@mskpatents.com with any questions you may have, or to arrange a consultation.


Further information and links

If you have any questions on this issue or any other aspect of patent law, please contact mail@mskpatents.com.

Useful links: