On March 1, 2023, the sunrise period began, the 3-month phase before the start of the Unitary Patent and the Unified Patent Court on June 1, 2023. From now on, it is possible to file opt-out requests and thus exclude the jurisdiction of the UPC for existing EP patents.
In the following, we have compiled the most important questions concerning UP and UPC and answered them for you.
What are the essential features of the Unitary Patent?
With the Unitary Patent (UP), it is possible for the first time to enforce property rights, but also to establish their invalidity, throughout Europe by means of a single procedure. It is a supplement to the classical European patent, which has existed since 1975, for which the patent proprietor only has to file an application for registration. Together with the Unitary Patent, the Unified Patent Court will be introduced, which will not only be responsible for the new Unitary Patents, but also for all previously pending or granted classical European patents. However, the applicant has the option to exclude the jurisdiction of the EPC by filing a request.
What is the difference between the European Patent (EP) and the Unitary Patent (UP)?
The European Patent is a bundle of national patents which are subject to a single joint examination. Currently, 39 states (including the extension and validation states) participate in the European Patent Convention (EPC). As the EPC is a supranational agreement, European patents will continue to cover the UK even after Brexit.
Once the examination process is complete, the bundle opens up and releases the individual national patents, for which the applicant must then validate in each individual member state in which it seeks protection. The enforcement of these individual national patents is then the exclusive responsibility of the respective national courts.
The Unitary Patent, on the other hand, is a „European patent with unitary effect“, i.e. a European patent granted by the EPO in accordance with the rules and procedures of the EPC, which, after grant, is given unitary effect for the territory of the participating member states at the request of the patent proprietor. This allows the patent proprietor, for example, to obtain enforcement at the European level in one proceeding without having to file separate lawsuits in each individual member state.
Opt-in, Opt-out, Sunrise Period – what’s that all about?
“Opt-in“ is the request to the EPO to register a granted European patent as a Unitary Patent. “Opt-out“ is the request to the Unified Patent Court not to be responsible for a classically granted European patent; this option is limited to 7 years (with an option for extension). The “Sunrise Period” refers to a transitional period from 1.3.2023 until the official start of the Unitary Patent on 1.6.2023, during which applicants can already file requests for an opt-out.
Is there a new legal system for the Unitary Patent?
No, the basis of the Unitary Patent system will continue to be the EPC. This means that the pre-grant procedure is exactly the same as for European patents. Applicants file a European patent application with the EPO and request the grant of a European patent for individual or all EPC contracting states. The EPO examines the application under the EPC and grants a European patent if all formal and substantive requirements for patentability are met. Thus, the Unitary Patent is a supplement to the previous process, as shown in the figure below:
Does the Unitary Patent cover all member states of the EPC?
Unfortunately not. To date, only 17 states have ratified the Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden (see figure). However, it is expected that this group will expand in the foreseeable future to include the states that have also signed the „Enhanced Cooperation Agreement“. Then the Unitary Patent would comprise 25 states.
Countries ofEnhanced cooperation Agreement“ (25) / UP member countries UP (17)
This means that currently important states like Spain or Poland do not participate. The same applies to Great Britain: since they are no longer members of the EU, just like Switzerland or Turkey, they cannot participate in the Unitary Patent. If patent protection is desired in these countries, a classical national validation must be carried out. However, a doublee protection by UP and EP is not possible!
When does the unitary patent start?
Start date is June 1, 2023, the sunrise period for filing opt-out applications started on March 1, 2023; already since January 1, 2023, it has been possible to file early applications for the registration of patents granted in the meantime (see figure).
How do I request a Unitary Patent?
A simple request („opt-in“) to the EPO is sufficient; this will be free of charge. The so-called „request for unitary effect“ must be filed within one month after publication of the grant and requires that equal claims have been granted for all member states. The EPO recommends using the corresponding new Form 7000 for this purpose:
Attention: This deadline cannot be extended! However, it is possible to apply for reinstatement if the deadline is missed, but only within 2 months of the original deadline. In addition, late fees will be due in this case.
Together with the request, a complete translation of the patent specification must be filed, viz:
- if the language of the proceedings is French or German, a complete translation into English, or
- if the language of the proceedings is English, a full translation into another official language of the European Union.
The request for unitary effect may be withdrawn only as long as the EPO has not taken a decision thereon.
Does the Unitary Patent offer any financial advantages over the European patent?
It does. When comparing the costs of a Unitary Patent and a classical European patent, not only the renewal fees have to be considered, but also the costs related to the validation and maintenance of a classical European patent. If one compares the costs for the maintenance of a Unitary Patent over the full term of 20 years with the costs that would be incurred if the property rights were validated individually in the 25 member states, then the Unitary Patent has a cost advantage of around 80 % (see graph):
Now, patents are only maintained over their entire term in exceptional cases. But a further comparison shows that a Unitary Patent is also cheaper than validation in 4 states. This means, if only up to 3 member states are designated, the European patent is cheaper, but with each further designation the cost advantage for the Unitary Patent increases. The fee level is particularly attractive in the first years, because the annual fees for the maintenance of a Unitary Patent amount to less than 5,000 EUR in the first ten years – the average life of a European patent. The renewal fees are provided in the following table:
Are there ways to save on fees?
Yes, and twice. First, the renewal fees are reduced by 15% if the patent applicant submits a declaration of willingness to license. For small and medium-sized enterprises (SMEs), natural persons, NGOs, universities and research institutions, translation fees are reduced to a lump sum payment of EUR 500.
What is the Unified Patent Court (UPC) all about?
The Unified Patent Court (UPC) is a common court of the states participating in the Unitary Patent. It is established with exclusive jurisdiction for both
- Unitary Patents as well as
- classical European patents
validated in one or more of these states.
The EPC offers patent owners the opportunity to avoid the high costs, risk and expense associated with parallel litigation in different jurisdictions.
What is meant by an opt-out?
In principle, the UPC is from now on also responsible for classical European patents. However, there are exceptions for a transitional period of seven years, which can be extended by up to another seven years. During this period, actions for infringement or for revocation can still be brought before national courts.
In addition, a proprietor or applicant of a European patent granted or applied for before the expiry of this transitional period may exclude the jurisdiction of the UPC for his patent or application (so-called „opt-out“), provided, however, that no action has yet been brought before the UPC. He may also withdraw from this opt-out at any time, provided that no action has yet been brought before a national court.
The opt-out request can be withdrawn at any time, but only in cases where no national infringement or invalidity proceedings are pending.
How can I request an opt-out?
A written request is required, but it must be addressed to the UPC office and not to EPO.
Opt-out applications can be submitted as early as 1.3.2023.
What is the structure of the UPC?
The court will consist of a court of first instance and a court of appeal. In addition, a patent mediation and arbitration center is foreseen to promote amicable settlements. The panel of judges will be composed of legally and technically qualified judges with extensive experience in patent litigation.
The Court of First Instance will have a decentralized structure with local or regional chambers in the Member States and, for certain cases, a central chamber in Paris with a division in Munich. Local chambers will be established in the following locations, for example: Vienna, Brussels, Copenhagen, Helsinki, Paris, Düsseldorf, Hamburg , Mannheim, Munich , Milan, Lisbon, Ljubljana, The Hague, Stockholm. With the accession of further states, the number of local chambers will increase.
The Court of Appeal has its seat in Luxembourg and decides on appeals against decisions of the Court of First Instance. The President of the Court of Appeal is also the legal representative of the EPC.
What does „forum shopping“ mean?
With the large number of chambers spread throughout Europe, the question arises as to where one wishes to bring one’s case. The place of jurisdiction depends on the place where the patent infringement took place. If different countries come into consideration, the selection of the competent court – forum shopping – is of strategic importance. For example, German courts are accustomed to hearing patent infringement and the resulting nullity action separately, whereas in the Netherlands, for example, these are always heard together. Depending on which approach one expects to benefit as a plaintiff, one will take such aspects into account when selecting the competent court.