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2022 Ⓒ Boston Patent Law Association
Volume 53, Issue 3

UPCA Overview

By John Spangenberger and Tom Sullivan, Lando & Anastasi
The European Union’s Unified Patent Court Agreement (UPCA) is expected to come into force at the end of 2022,1 and offers significant changes to existing European patent practice in the 17 EU Member States that have currently ratified the UPCA.2 Although pre-grant examination of European patents will not be affected, the UPCA introduces two major post-grant considerations for European patent practice.3
First, the UPCA enables practitioners to obtain a single Unitary Patent from a granted European Patent rather than requiring validation and maintenance in each desired EU Member State.4 Second, the UPCA creates the Unified Patent Court, an international court in which both Unitary Patents and European patents may be litigated for issues of infringement and validity.5
Key Action Items:
  • European-patent owners will need to consider whether to request a Unitary Patent when European patents are granted.
  • European-patent owners should consider now whether to opt their existing European patents out of the Unified Patent Court’s (UPC) exclusive jurisdiction for their existing European patents.
I. Unitary Patents
Pre-grant examination of European patents will not be affected by the UPCA.6 Once a European patent is granted, however, practitioners will be able to request a Unitary Patent offering protection in up to 25 out of 28 EU Member States, with Spain, Poland, and Croatia being the three omitted states.7 Currently, 17 EU Member States have ratified the UPCA, including Germany, France, Italy, Austria, and the Netherlands;8 the United Kingdom has withdrawn from the UPCA as a consequence of Brexit.9 There is no fee to request nor register a Unitary Patent.10
Unitary Patents streamline and simplify post-grant patent management by consolidating administration with the EPO. Currently, European patents must be separately validated and maintained in selected validation countries. With a Unitary Patent, all post-grant administration is handled directly with the EPO.11 A single annual renewal fee is paid directly to the EPO and is competitively priced, particularly for the first ten years.12 Costs benefits are particularly attractive if protection would otherwise be sought in four or more countries—the Unitary Patent renewal fees were calculated to correspond to the combined cost of renewal fees in the four most validated countries. Additional savings will be available in six years, after which translations are no longer required, although the six-year prior may be extended.13
Although Unitary Patents offer significant administrative and cost advantages, national courts will not have jurisdiction over Unitary Patents. The Unified Patent Court (UPC) will have exclusive jurisdiction over Unitary Patents, whereas national courts will share jurisdiction with the UPC over national validations of European patents.
Key Takeaways: Unitary Patents significantly simplify post-grant management of European patents. Renewal fees are competitively priced and do not depend on a number of validated states. However, Unitary Patents may only be brought before the UPC. Once the UPCA comes into force, patent owners should consider whether to request a Unitary Patent for newly granted European patents.
II. Unified Patent Court
The Unified Patent Court (UPC) is an international court that will adjudicate questions of invalidity and infringement for both Unitary Patents and national validations of European patents.14 Currently, individual national courts separately adjudicate European patents, which is expensive and can produce inconsistent decisions. The UPC consolidates litigation with exclusive jurisdiction over litigation of both Unitary Patents and national validations of European patents.15
National courts have no jurisdiction over Unitary Patents.16 National validations of European patents may still be litigated in national courts during an initial seven-year transitional period starting once the UPC begins operations.17 European-patent owners may opt a European patent out of the jurisdiction of the UPC at any time during the seven-year transitional period.18 There will also be a three-month sunrise period before the UPC begins operations during which owners may opt a European patent out of UPC jurisdiction.19
Once an action is brought before the UPC, however, the patent owner can no longer opt the European patent out of the UPC’s jurisdiction. European-patent owners should therefore take advantage of the three-month sunrise period to consider whether to opt European patents out of the UPC’s jurisdiction.
Failing to opt out of the UPC’s jurisdiction may render the European patent vulnerable to invalidation in all countries in a single action, whereas a traditional European patent can only be invalidated on a country-by-country basis. After the seven-year transitional period, the UPC will have exclusive jurisdiction over European patents that have not been opted out of the UPC’s jurisdiction.20
Opting a European patent out of the UPC’s jurisdiction is effective for the entire lifetime of the European patent (which may extend beyond the end of the seven-year transition period), though a patent owner may opt the European patent back into the UPC’s jurisdiction at any time before an action is brought in national court.21
As an untested forum, the UPC presents significant uncertainty to litigants. However, litigants are also given a rare opportunity to attain early proficiency in a new forum and to influence the development of UPC case law. In deciding whether to opt European patents out of the UPC’s jurisdiction, patent owners should thus consider whether this uncertainty would be beneficial.
Key Takeaways: The UPC consolidates and streamlines litigation of Unitary Patents and European patents. The UPC will have exclusive jurisdiction over Unitary Patents, and will have exclusive jurisdiction over European patents after a seven-year transition period. Patent owners can opt European patents out of the UPC’s jurisdiction three months before the UPC begins operations and up to the end of the seven-year transition period. Opting out is effective for the entire lifetime of the European patent, though the patent can be opted back into the UPC’s jurisdiction. Leaving a European patent open to the UPC’s jurisdiction exposes the patent to uncertain litigation in an untested forum.
1 https://www.epo.org/applying/european/unitary/unitary-patent/start.html
2 https://www.epo.org/applying/european/unitary/unitary-patent.html
3 Id.
4 Id.
5 https://www.epo.org/applying/european/unitary/upc.html 6 https://www.epo.org/applying/european/unitary/unitary-patent/features.html
7 Id.
8 https://www.epo.org/applying/european/unitary/unitary-patent.html 9 https://www.unified-patent-court.org/news/uk-withdrawal-upca 10 https://www.epo.org/applying/european/unitary/unitary-patent.html
11 https://www.epo.org/applying/european/unitary/unitary-patent/features.html 12 https://www.epo.org/applying/european/unitary/unitary-patent/cost.html 13 https://www.epo.org/applying/european/unitary/unitary-patent/compensation.html 14 https://www.epo.org/applying/european/unitary/upc.html 15 Id. 16 https://www.epo.org/applying/european/unitary/upc/upc-faq.html 17 Id. 18 Id. 19 Id.
20 Id. 21 Id.