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Unitary Patent & Unified Patent Court

A new European patent system

029 Bergggren 2-2024 HIGH RES

Navigating the UPC with expertise

Berggren is a full-service IP firm with experienced litigators and patent attorneys under one roof. With more than 30 lawyers and European Patent Attorneys qualified to represent clients before the Unified Patent Court, Berggren is strongly positioned to help our clients protect their inventions and enforce their patents across Europe in the new Unitary Patent and Unified Patent Court system.

Berggren’s UPC representatives have extensive experience in the existing national patent litigation regime as well as the EPO’s opposition and appeal procedures. With both the legal and technical expertise required to effectively handle all contentious patent work under one roof, Berggren is a one-stop-shop for the enforcement and defence in pan-European patent litigation.

With offices close to the UPC local divisions in Munich and Helsinki, and experienced attorneys from across Europe, including native English and German speakers, our lawyers and patent attorneys are ideally positioned to manage cases before the Court.

Need advice?

Our team is ready to help you navigate the new UPC landscape. For more information about you can use the new system to your advantage, get in touch with one of our professionals.

To view a full list of our UPC representatives, click here.

Robert Alderson

International Client Relations, US and European Patent Attorney

Mariella Massaro

Certified Licensing Professional, IP Strategist, International Client Relations

Michael Nielsen

European Patent Attorney, European Patent Litigator, Patent Attorney (UK)

Berggren UP Cost Simulator

Better value for money?

While there are many factors to be taken into account when decising whether to obtain a unitary patent or go down the "classic" national validation route, one of the largest factors is the relative cost of each option.

Our UP cost simulator can help you understand the costs of the new unitary patent compared to classic national validation. It interactively demonstrates how the choice of a unitary patent or “classic” national validation of a European patent affects the ongoing and lifetime costs of the patent, both in terms of the grant phase costs and the ongoing renewal fees.

 

Use our UP cost simulator

Unified Patent Court & Opt-Out FAQ

The future of patent litigation in Europe

The Unified Patent Court (UPC) is a new European patent court with exclusive jurisdiction over the new unitary patent as well as, by default, all European patents that have been nationally validated in countries that are participating in the UP/UPC system unless opted out.

As well as the court itself, the issue of opt-out has been one of the most discussed—and misunderstood—topics in this context.

To help simplify and clarify the new system, we have collected and answered some of the most common questions here.

 

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What is the Unified Patent Court?

The Unified Patent Court (UPC) is a new European patent court that has been established to resolve disputes related to the new unitary patent. The UPC has exclusive jurisdiction over unitary patents. It is the only venue where a unitary patent can be enforced and, except for the time-limited EPO opposition procedure, it is the only venue where the validity of a unitary patent can be challenged.

By default, the UPC also has jurisdiction over all national validations of European patents in the countries that are participating in the UP/UPC system. The UPC therefore enables multiple nationally validated patents in different countries to be enforced in a single action, as opposed to individually in actions before each national court. It also enable multiple nationally validated patents to be revoked in a single action. 

The UPC therefore provides new opportunities and risks for both patent holders and third parties.

Which countries are taking part in the UPC system?

At present, the countries that are participating in the unitary patent and Unified Patent Court system are:

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

All current EU member states except for Spain, Croatia and Poland are expected to join the system in the coming months and years.

What is opt-out?

Opt-out is the mechanism by which nationally validated patents can be removed ("opted out") of the Unified Patent Court's jurisdiction.

Opt-out is a simple mechanism with a single function: preventing a third party from bringing a pan-European revocation action before the UPC.

It is a transitional provision that will be available for at least 7, possibly up to 14 years, i.e. until 2030 at least and possibly until 2037. After the transitional period is over, it will no longer be possible to opt out. All European patents that are in force in countries that are participating in the system, whether as a nationally validated patent or a unitary patent, will be under the exclusive jurisdiction of the UPC.

Should I opt out?

There are many factors to consider when deciding whether to opt out any given patent, but ultimately, opt-out is about risk management.

One the one hand, opting out prevents a third party from bringing a revocation action before the UPC and potentially invalidating the patent in multiple countries in one move.

On the other hand, if you opt out a patent but later decide that it would be advantageous to enforce it across multiple countries in a single action before the UPC, you could be prevented from doing so by a third party pre-empting a withdrawal of the opt-out and bringing an action before a national court.

Neither opting out or staying in is without risk, the biggest question is which risk is preferable for you.

How do I opt a patent out of the UPC's jurisdiction?

An opt-out must be filed pro-actively, before any actions are brought before the UPC. If an action has already commenced before the UPC, it is no longer possible to opt-out.

Filing an opt-out is a relatively simple process but it can only be done via the Unified Patent Court's case management system, which is only accessible to UPC representatives (European Patent Litigators and other lawyers qualified before national courts of the participating countries).

 

If I don't opt out, do I get a unitary patent?

Opt-out should not (but can easily) be confused with the new unitary patent, which was also introduced at the same time as the UPC.

Opt-out does not have any effect on the geographical scope of the patent, nor on the renewal fees that are payable to keep the patent in force. 

The unitary patent is a new option only available for European patents that were granted on or after 1 June 2023. Unitary patents cannot be opted out, so if a unitary patent is requested, the opt-out issue is no longer relevant.

Opt-out is only relevant for European patents that have been or will be nationally validated, either historically because the unitary patent was not an option, or in the future because the patent holder would prefer to continue to use the national validation system (for a discussion of why this might be the case, see the unitary patent FAQ above).

Can I withdraw an opt-out?

An opt-out can be withdrawn at any time, provided that an action has not commenced before a national court in a matter that would have fallen within the UPC's jurisidiction, e.g. an infringement or revocation action.

Even after the end of the opt-out transitional period, it will remain possible to withdraw an opt-out provided the above condition is met.

However, once an opt-out has been filed and withdrawn, the patent cannot be opted out again. Thus, while the decision to opt-out is not final, the decision to withdraw an opt-out is.

Unitary Patent FAQ

A truly pan-European patent

The unitary patent is a new option available to patent holders after the European Patent Office grants their patent application.

Despite the oft-repeated claim that the new unitary patent system simplifies the European patent system, it has, in fact, added another level of complexity to an already complicated system.

To help you understand the new patent and how it fits into the overall system, we have answered some of the most common questions here.

 

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What is a unitary patent?

A unitary patent is a new type of patent that has effect in multiple European Union member states. At the moment, 17 EU member states are participating in the system, including Germany, France, the Netherlands, Finland, and Sweden. More EU countries are expected to join the system over the coming months and years.

As a "European patent with unitary effect", to give it its full, official name, a unitary patent is a single patent that can be used to prevent third parties from performing infringing acts throughout the majority of the EU. At the same time, if a unitary patent is found to be invalid, it is revoked in its entirety, i.e. across all of the participating countries. This contrasts with the existing national validation system, in which a granted European patent becomes a “bundle” of entirely separate national rights after grant, each of which must be enforced, and challenged, individually before national courts.

The unitary patent does not replace the existing European patent system, or even the national validation system – it is a new option as part of the existing system that can itself form part of a bundle of patents, including national patents in countries that are either not an EU member state, such as the UK and Switzerland, or are EU states not currently participating in the system.

Does the unitary patent replace the European patent?

The unitary patent does not replace the European patent.

Historically, when a European patent was granted, it had to be "converted" into individual national patents in every European country where protection was desired. This process was (and is) called national validation.

Now, the unitary patent is a new option that can be selected instead of national validation in the countries that are participating in the unitary patent system.

In countries that are not participating in the UP system, such as the UK, Spain, and Poland, national validation remains the only option for obtaining protection based on a European patent.

What is the geographical scope of a unitary patent?

A unitary patent has effect in all of the countries that are participating in the system at the date of registration of the unitary patent.

At present, the countries that are participating in the unitary patent system are:

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

All current EU member states except for Spain, Croatia and Poland are expected to join the system in the coming months and years.

While the number of participating member states will to increase, the geographical coverage of existing unitary patents will not. The geographical scope of a given unitary patent is locked in on the date of its registration.

How can I get a unitary patent?

Unitary patents are granted by the European Patent Office (EPO) following the normal examination and grant process for European patents. A “request for unitary effect” with the EPO within one month of grant of the European patent.

In practice this means that the process for obtaining a unitary patent can be seen as a new option in the existing national validation process.

During a transitional period, which will last until at least 2029 and perhaps all the way to 2035, a full translation of the European patent specification must be filed. If the language of the EPO proceedings was English, as is the case for the vast majority of European patents, the specification must be translated into an official language of any EU member state. If the language of the EPO proceedings was French or German, the specification must be translated into English.

How much does a unitary patent cost?

This question is perhaps best answered by our interactive unitary patent cost simulator, which can be accessed here.

The cost of a unitary patent can be broken down into three stages:

  1. the cost of applying for and obtaining a granted European patent,
  2. the cost of requesting and obtaining a unitary patent after the European patent has been granted, and
  3. the renewal costs for keeping the unitary patent in force after the unitary patent has been granted.

The European patent application process, up to and including grant of the European patent by the European Patent Office, is not significantly affected by the introduction of the unitary patent. Therefore, in the context of obtaining a unitary patent, the cost of applying for an obtaining a granted European patent is the same as it was before the new system came into effect. 

There is no official fee payable for the grant of a unitary patentrequest for unitary effect, i.e. the request for a unitary patent, that is filed with the European Patent Office. Which means that the cost of requesting and obtaining a unitary patent after the European patent has been granted includes only the cost of obtaining a translation of the specification and any service fees for handling the request.

The translation is provided "for information only", i.e. it should not have any legal effect, and can be provided in any official language of an EU member state, even of those that are not participating in the UP system, like Spanish or Polish. If the granted European patent will be validated in Spain or Poland as well, then it may be possible to avoid translation costs entirely by using the same translation for both the Spanish or Polish national validation and the unitary patent.

Finally, the ongoing renewal fees payable each year after the unitary patent is granted are roughly equal to the combined renewal fees in France, Germany, Italy, and the Netherlands - the four most popular national validation choice of the countries participating in the UP system.

Is a unitary patent cheaper than national validation?

Again, this question is best answered by our interactive unitary patent cost simulator, which allows you to compare the estimated costs for national validation and a unitary patent, can be accessed here.

In general, it can be said that a unitary patent will cost the same or be cheaper than national validation if the unitary patent replaces three or more national validations. While the combined renewal fees for the unitary patent are roughly equal to the combined renewal fees in four countries, when renewal fee service provider fees for paying on renewal fee (for the unitary patent) and three renewal fees (for national validations) are taken into account, the break-even point is closer to three.

However, in the simplest, and most common, case, where a European patent is validated only in the UK, France, and Germany, national validation will continue to be the cheaper option, since the UK is not participating in the UP system.

Translation costs are more complex, as the translations required for national validation vary from country to country. In Germany and France, for example, no translation is required. In Finland and Sweden, a translation of the claims into the local language is required. In Austria and Italy, a fully translation of the patent specification is required.

Although the unitary patent requires that a full translation of the European patent specification be prepared (during the current transitional period of 6-12 years), the cost of a translation is, in many cases, not very significant compared to the cost of accumulated renewal fees. Even for longer specifications that would have significant translation costs, it may be possible to reduce or even avoid the costs for a separate translation altogether, for example if a Spanish or Polish translation of the specification that is prepared for national validation in Spain or Poland can be reused for the unitary patent.

Why should I get a unitary patent?

Aside from potential cost savings associated with a unitary patent, the biggest advantage of the unitary patent is the ability to enforce the patent across the vast majority of the EU population and economy in a single action before the new Unified Patent Court.

Already within the first year of operation, the Court has shown itself to be competent, well-organised, and a very attractive option for patent holders.

However, there are also disadvantages and risks associated with the unitary patent.

For example, the other side of the pan-European enforcement in a single action coin is that pan-European revocation of the unitary patent is also possible. Unlike nationally validated patents, which have historically needed to be attacked independently before national courts, if the Unified Patent Court considers that the unitary patent is invalid, it is revoked across all participating countries in a single move. 

Furthermore, even though in many cases the overall cost for a unitary patent will be lower, the renewal fees, like the unitary patent, are all or nothing. In other words, it is not possible to reduce the renewal fees that are payable for a unitary patent by dropping protection in some countries, like it is with nationally validated patents. There is therefore some reduced flexibility in the choice of a unitary patent.

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