As of 01 June 2023 the Agreement on a Unified Patent Court (UPCA) has entered into force, resulting in the most significant change to patent law in Europe for decades. The UPCA introduces the Unified Patent Court (UPC), an international patent court for participating European Union member states, and a European Patent with unitary effect, or Unitary Patent (UP), as an alternative to the “classical” European Patent.
The UPCA has a broad jurisdiction. Currently 24 EU member states have signed the UPCA and 17 EU states have ratified the agreement. The UPC will have jurisdiction in, and UPs will have effect in, the ratified states from 01 June 2023. The further 7 EU member states are expected to ratify the agreement in due course. Additionally, three EU member states, Spain, Croatia and Poland, which have not signed up, can do so at any time.
The Unified Patent Court will have exclusive jurisdiction for infringement and validity proceedings for classical European patents, Unitary patents and supplementary protection certificates (SPCs) in force in UPC participating countries.
There has been much discussion on the pros and cons of the UPC. For example, the centralised patent court aims to prevent costly and lengthy parallel litigation across different EU member states with different legal systems. However, there is the risk of central revocation of a patent before the UPC and the court is yet untested, with no established case law. European patent applications, classical European patents and SPCs, but not UPs, can be opted out from the jurisdiction of the UPC during a transitional period, so that they are under the sole competence of national courts, with the option to opt back in later providing no litigation has commenced, allowing patentees to follow a “wait and see” approach.
The Unitary Patent will be an alternative to separate validation of a patent in EU member states. A UP will have unitary effect across all of the EU member states which have ratified the agreement. In parallel to requesting a UP, a patent can be validated separately in EPO participating states which are not UPC members, such as Great Britain.
Again, it will be important for a patentee to weigh up the pros and cons of a UP for their business. Pros include the UP will provide protection across all UPCA ratified states. Additionally, a single renewal fee will be payable to the EPO to maintain the UP in all ratified countries, and will be cost effective for patent proprietors who wish to validate their patent in four or more UPC contracting states. However, UPs do not cover all countries which are EPC members and it is not possible to allow protection in particular jurisdictions to lapse over the lifetime of the UP in countries that are less commercially important, and thereby manage renewal costs over time.
The introduction of the UPCA brings a major change to the post-grant patent process in Europe. It will be important for a patentee to consider and review their options and follow a tailored approach to navigating this change as the UPC evolves.