There are traditionally two ways of protecting an invention in Europe. 

The first one is to directly file national patent application (NP) for each State of interest. Each national patent application undergoes a specific examination and granting procedure.

The second one is the "traditional" European Patent. The European Patent Convention (EPC), in 1977 established a unified filing and examination procedure aimed at granting the so-called European Patent. Once granted, the European Patent does not constitute a unitary right since it must be validated in each State of interest chosen among the Contracting States (CS), currently 39, thus originating a "bundle" of national patents (EP-CS). In many EPC Contracting States, validation requires translation of the text (or at least the set of claims) of the European Patent. In addition, each validation is subject to the laws and jurisdiction of the single Contracting States, as well as the related charges.

 

For a part of the European Union, i.e., the EU Member States participating in the EU Patent Package (CS1), there is a third option provided at the end of the European Patent granting procedure, as an alternative to the “traditional” validations. This third option is available by filing at the EPO a request for the so-called “Unitary Effect” whereby the EP patent, for these States, constitutes a single right known as Unitary Patent (UP). For a transitional period of at least 6 years, but not exceeding 12 years, only one translation of the granted European Patent text needs to be filed to obtain a Unitary Patent. At the end of the transitional period, no more translations need to be filed.

For EU Member States participating in the EU Patent Package (CS1), the Unitary Patent thus offers a further option in addition to the direct national option and the “traditional” European Patent (validations). For Contracting States of the EPC that are not party to the EU Patent Package (CS2) because they are not EU Members or because the EU Patent Package does not apply to their territory, patent protection can only be obtained with the direct national option or the “traditional” European Patent (validations) option.

The EU Patent Package is a new system of laws that aims to create a Unitary Patent valid for the territory of the EU Member States party to the EU Patent Package, and a single court competent for disputes relating to Unitary Patents and “traditional” European Patents. The EU Patent Package comprises the Agreement on a Unified Patent Court (Agreement 2013/C 175/01, commonly referred to as the "UPC Agreement") and two European Regulations (Regulation 1257/12 and Regulation 1260/12).

The EU Patent Package will enter into force a few months after the deposit of the thirteenth instrument of ratification or accession of the UPC Agreement, including France, Germany and Italy. Based on the current status of ratifications, the EU Patent Package is expected to enter into force on April 1, 2023.

The Unitary Patent is a single patent that, when fully implemented, will provide uniform protection in the EU Member States participating in the EU Patent Package (CS1 – green-coded states), i.e. all EU Member States except Croatia, Poland, and Spain, which have not joined for the time being.

The Unitary Patent means a European Patent application filed with the European Patent Office (EPO), examined, and granted by the EPO and for which Unitary Effect has been registered following the grant.

The Unitary Patent must be enforced and can be challenged before a new centralized court system generated by the EU Patent Package: The Unified Patent Court (UPC).

The Unitary Patent has "unitary effect", which means
  1. It provides uniform protection in the EU Member States participating to the EU Patent Package.
  2. It is subject to the payment of a single annual maintenance fee.
  3. It may only be limited, transferred or revoked, or lapse, in respect of all EU Member States participating to the EU Patent Package.
  4. It is subject to the exclusive jurisdiction of the Unified Patent Court (UPC).
The single maintenance fee is comparable to the sum of the national maintenance fees payable in Germany, France, the Netherlands, and Great Britain (which, although no longer an EU Member State, was at the time the fees were introduced).
After being granted by the European Patent Office, in the traditional European Patent system the European Patent must be validated in those EPC Contracting States of interest of the proprietor, so creating a 'bundle' of national patents. The European Patent ceases to have effect for the EPC Contracting States where it has not been validated.After being granted by the European Patent Office, a unitary effect can be attributed to the European Patent in all EU Member States participating to the EU Patent Package filing a request at the EPO. In the other States the traditional European Patent system applies (validations).

No. The European Union comprises 27 Member States while, when fully implemented, the Unitary Patent will be available to 24 Participating Member States, i.e., all Member States of the European Union except for (and subject to change) Spain, Croatia, and Poland (Map 1).

Furthermore, the EU Patent Package will enter into force after the deposit of the thirteenth instrument of ratification or accession of the UPC Agreement, including France, Germany and Italy. Thus, upon entry into force of the EU Patent Package, the Unitary Patent may have effect for fewer than 24, presumably 17, states (i.e., only in the Participating Member States that have submitted their instrument of ratification of the UPC Agreement - Map 2). Such Unitary Patents having effect for fewer than 24 Member States will not be extendable to States that ratify the UPC Agreement later. In other words, the territorial extension of a Unitary Patent will be defined on the date of registration of its “unitary effect” and will remain unchanged even if new states join the EU Patent Package.

No. A “traditional” European Patent granted can be validated in all 39 Contracting States of the EPC (update 1st October 2022 – Map 1), in addition to providing protection in some non-EPC States under bilateral agreements. When fully implemented, the Unitary Patent will be effective in 24 EU Member States (Map 2). For the time being, it will not be effective in Spain, Croatia, and Poland, which do not participate in the EU Patent Package, nor in EPC Contracting States that are not EU Member States (e.g., Great Britain, Switzerland, Norway, Turkey). For these states, the only chance is to validate the European Patent in the traditional

No, it is not possible.
The question of dual protection by means of a Unitary Patent and a national patent is decided at national level.
Yes. Since Turkey is not part of the Unitary Patent, the validation in Turkey of the European Patent can co-exist with the Unitary Patent. The same situation applies to all EPC Contracting States that do not participate in the Unitary Patent, whether non-EU states or EU states that are not part of the EU Patent Package.

The Unitary Patent is a European Patent granted by the EPO according to the rules and procedures of the EPC, for which the proprietor files a request for unitary effect with the EPO within one month of the publication of the decision to grant.

No, when fully operational. For a transitional period of at least 6 years, but not exceeding 12 years, the request for unitary effect must include a complete translation into English if the patent was granted in French or German, or a translation into any language of the European Union if the patent was granted in English.
It depends on the choice criterion.If the criterion of choice is cost-effectiveness, the language of the priority application (if any) may reduce translation costs. For example, if the Unitary Patent claims the priority of an Italian application, the description and claims originally drafted in Italian can be adapted to the text of the granted patent. Alternatively, the language of an EU Member State already available for other reasons (e.g., Spanish in the case of a simultaneous validation in Spain) may be chosen.If the criterion of choice is strategic convenience, the choice of the language of the state in which the main competitor is based or which corresponds to the largest outlet market for the subject matter of the patent may be useful in the case of future actions before the Unified Patent Court.
A request for unitary effect can be filed:
  1. for European Patents granted after the entry into force of the EU Patent Package
  2. that have been granted with the same set of claims for all participating Member States (Italy, France, Germany, the Netherlands, Belgium, Luxembourg, Poland, Malta, Cyprus, Greece, Sweden, Denmark, Finland, Estonia, Latvia, Lithuania, Czech Republic, Slovak Republic, Slovenia, Portugal, Austria, Romania, Bulgaria, Hungary, Ireland)
  3. with reference to all EU Member States participating in the EU Patent Package (i.e., it will not be possible to exclude certain states from a Unitary Patent).
In general, no. However, during a transitional period ("sunrise period") preceding the entry into force of the EU Patent Package and if certain conditions are met, it will be possible to request to postpone the decision to grant of the European patent or file an early request for unitary effect. This is to allow access to the Unitary Patent also for those European patents that would risk being excluded because they were granted shortly before the entry into force of the EU Patent Package.

A first factor affecting costs is the filing and granting procedure for the “traditional” European Patent, which remains unchanged from the past, as does its cost.

Another factor is the need to file a translation when applying for the Unitary Patent, after the grant and limited to the transitional period.

Furthermore, after grant, the Unitary Patent will be subject to a single maintenance fee comparable to the sum of the national maintenance fees payable in Germany, France, the Netherlands, and Great Britain.

In choosing the best option after the European Patent granting procedure, factors such as geographic scope, current and future costs, the 'strength' of the patent, the importance of the related product/process and the litigiousness of the industry must be taken into consideration.In particular, the choice of the Unitary Patent has positive and negative repercussions, including:
  1. The possibility to file a single request for all EU Member States participating in the EU Patent Package, bearing in mind that in the initial transitional period not all states may be available or covered.
  2. The possibility of obtaining extended protection without the need to prepare translations (when fully operational), which is countered by the risk that, in an infringement case at the UPC, this may alleviate the damage count for some parties (SMEs, ...) who are unable to understand the language in which the patent was granted.
  3. The possibility, if any, of converting the Unitary Patent into national patents or utility models, the adoption of which is left to national laws.
  4. The possibility of single renewal, which on the one hand represents a simplification and on the other hand prevents selective abandonment during the 20-year patent term.
  5. The cost of such single renewal (comparable to the sum of national maintenance fees payable in Germany, France, the Netherlands, and Great Britain) which makes the Unitary Patent advantageous if the territorial interest extends to 4 or more states.
  6. The possibility for certain parties (SMEs, ...) to receive a lump sum compensation for translations made at the time of filing the European patent application.
  7. The possibility of uniform protection for all EU Member States participating in the EU Patent Package and for the entire duration of the patent.
  8. The lack, as of today, of a Unitary Supplementary Protection Certificate (SPC).
  9. The provision of a single national law governing the Unitary Patent as an object of property.
  10. The exclusive and non-waivable jurisdiction of the UPC over the Unitary Patent with the possibility of centralised actions against possible infringers and with the risk of centralized revocation or limitation further aggravated by the fact that the validity of the Unitary Patent could be questioned in view of so-called 'national prior rights'.
The UPC is a court common to the Contracting Member States of the Agreement establishing it, which can be ratified by any Member State of the European Union.With some exceptions during the initial transitional period, the UPC has exclusive jurisdiction for disputes relating to classic European Patents, Unitary Patents, Supplementary Protection Certificates (SPCs) and European Patent applications.The court's decisions apply, in the case of a classic European Patent, to the territory of the UPCA Contracting Member States for which the European Patent has effect.The UPC will therefore join the national courts with limited, but exclusive jurisdiction.The UPC has no jurisdiction over national patents.

The UPC consists of a Court of First Instance, a Court of Appeal and a Registry. 

The Court of First Instance comprises a central division and local/regional divisions. The central division has its seat in Paris and a division in Munich.

Each Contracting Member State may establish a local division or, together with other Contracting Member States, also depending on the number of actual or foreseeable patent litigation, a regional division of the Court of First Instance.

The Court of Appeal and the Registry shall be in Luxembourg.

 

All UPC panels must have a multinational composition.Each panel includes judges with legal training and qualifications, who may (but need not) be joined by judges with technical training and qualifications.
The UPC has exclusive jurisdiction, by way of example, in respect of actions for:
  1. revocation
  2. infringement
  3. provisional and protective measures and injunctions
  4. declarations of non-infringement
  5. damages
The objective of the UPC is to reach a first instance decision within one year.
In general, the central division has jurisdiction in respect of actions for revocation and for declarations of non-infringement, while the local/regional divisions have jurisdiction in respect of actions for infringements, provisional and protective measures and injunctions and damages.If an action for revocation and an action for infringement are brought in respect of the same patent, the UPC Agreement provides for the option of discussing both actions under one division (either central or local/regional).There is, with certain constraints, the possibility of "forum shopping" for the infringing plaintiff (who is also the Unitary Patent proprietor), i.e., the possibility of choosing a more convenient division, e.g., for logistical reasons, language, etc., before which litigating.
The choice of the language of proceedings depends on various factors, not always available to the parties. In most cases, the language of proceedings before the central division is the language in which the patent was granted (English or French or German) and the language of proceedings before a local/regional division is the official language of the Contracting Member State hosting the division.Furthermore, in general, the language of proceedings before the Court of Appeal is the language of proceedings before the Court of First Instance.However, numerous arrangements are made to provide adequate translation and interpretation during the proceedings, as required and to ensure an effective adversarial process.
It is still possible to file an opposition to the European Patent with the EPO. Parties to an action before the UPC must inform the Court of any opposition pending before the EPO.The UPC may suspend the proceedings if an early decision of the EPO can be expected.
UPC decisions apply to the territory of the UPCA Contracting Member States for which the European Patent has effect as a Unitary Patent or as "traditional" European Patent validations.
During an initial transitional period, it is possible to exercise the possibility to "opt-out", i.e., to waive the jurisdiction of the UPC for actions for revocation and infringement relating to "traditional" European Patent validations, European Patent Applications and Supplementary Protection Certificates (leaving the jurisdiction to national courts).It is not possible to exercise the opt-out for Unitary Patents.The duration of the transitional period is 7 years, which can be extended for a maximum of a further 7 years.In general, the opt-out may be exercised up to one month before the end of the transitional period, unless an action has already been brought before the UPC. The opt-out request may be withdrawn (opt-in) unless an action before a national court has already been brought.It is possible to exercise the opt-out even before the UPC Agreement comes into force, during the so-called 'sunrise period'.
The opt-out has affect for the entire life of the patent/SPC for which it was requested, unless withdrawn by the proprietor (opt-in).
In deciding whether to file an opt-out request, the following factors need to be considered:
  1. The importance of the patented product/process
  2. The impact of a central revocation
  3. The 'strength' of the patent
  4. The risk of infringement spanning several states
  5. The cost of litigation, damages, and court costs before the UPC
  6. The reliability and predictability of UPC decisions, especially at an early stage
  7. The presence of other available forms of protection (trademarks, design, know-how)
  8. Factors that may make it impossible to withdraw the opt-out request (opt-in), for example in case of a case before a national court
  9. The consent of all proprietors
Representation before the UPC is mandatory.Parties may be represented by:
  1. a European Patent Attorney with appropriate qualifications, such as a European Patent Litigation Certificate, or
  2. an attorney qualified to practice before the court of a Contracting Member State of the UPCA.
A protective letter is a way to reduce the risk of interim measures being ordered against an alleged infringer, such as an order to preserve evidence, seizure, injunction, and others.If a party fears that a request for provisional measures will be filed against it, it may file a protective letter with the Registry.The protective letter may state the reasons why a future request for provisional measures should be refused by the UPC and is effective for a period of six months (extendable).
If an action for infringement is brought before a local division of the UPC and the alleged infringer files a counterclaim for revocation, the local division may decide to:
  1. proceed to judge both the action for infringement and the counterclaim for revocation;
  2. transfer the counterclaim for revocation to the competent central division of the UPC. The local division remains competent for the action for infringement and is referred to as "bifurcation" in this case. The action for infringement may at this point either be suspended pending the central division's decision on the counterclaim for revocation or be decided independently by the local division without waiting for the outcome of the counterclaim for revocation (true bifurcation);
  3. transferring both the action for infringement and the counterclaim for revocation to the central division of the UPC, provided that all parties agree.
A fixed fee must be paid to the UPC for each action. For example, the fixed fee for an action for revocation is 20,000 EUR, while the fixed fee for an action for infringement is 11,000 EUR.For some actions, including actions and counterclaims for infringement, and actions for declarations of non-infringement, a value-based fee must be paid in addition to the fixed fee. The value-based fee is only due for disputes with a value of 500,000 EUR or more. The value of the dispute/claim is determined by the party bringing it (subject to exceptions).
Yes. Small and micro-enterprises (definition according to European Commission Recommendation No. 2003/361) pay only 60% of the fees.There are also reductions for cases where the parties, by mutual agreement, request that the dispute be dealt with and decided by a single judge (25%).Refunds of the fees paid, varying from 60% to 20%, are envisaged in the event that the dispute is resolved by way of settlement, also through the Mediation and Arbitration Centre, established at the UPC, before the conclusion of the first written phase (60% reduction), the interim phase (40%) or the final oral phase (20%).