Guidance

The Unitary Patent and Unified Patent Court

A unitary patent will protect your invention in up to 25 EU countries and will be subject to the jurisdiction of the Unified Patent Court.

Introduction

Currently there is no such thing as a single European patent. Instead, inventors must maintain individual patents in each country in which they wish to do business.

These patents must also be litigated separately in the national courts of each country.

In future, you will have the choice of protecting your invention in up to 25 EU countries with a single unitary patent. This will streamline the system and save on translation costs.

You will be able to challenge and defend unitary patents in a single court action through the Unified Patent Court.

The Unitary Patent

The current system

Currently, the European Patent Office (EPO) is able to search, examine and grant patents in a single procedure for up to 38 European states under the European Patent Convention (EPC). Once granted these are treated as separate national patents, known as European bundle patents.

Each of these national patents may be subject to national translation and validation requirements and legal proceedings, and must be renewed individually in each country.

The creation of the unitary patent

On 17 December 2012 the Council of the European Union approved two regulations that create a European patent with unitary effect (unitary patent).

A unitary patent, once granted by the EPO, will provide uniform protection with equal effect in all of the participating countries.

Any decisions on disputes relating to infringement or validity of a unitary patent will apply across the whole of the territory of the patent. Unitary patents will be subject to the payment of a single set of renewal fees to the EPO, which will manage the scheme centrally.

The unitary patent will offer a further choice for businesses seeking protection in more than one European country. The current system of patents granted by the EPO and validated in individual member states will remain available, though these European bundle patents may be subject to the jurisdiction of the Unified Patent Court (UPC) instead of the national courts of each member state.

Applicants will also be able to continue to obtain national patents from the patent offices of each participating country.

Entry into force

The unitary patent will be available once 13 member states including the UK, France and Germany have ratified the UPC agreement.

The status of ratification for each member state can be found on the EPO website.

Benefits of the unitary patent

The unitary patent will be optional, and businesses can decide if they wish to use it on a case-by-case basis.

For those seeking patent protection across the participating European countries, the unitary patent will offer a lower cost alternative to obtaining and maintaining a bundle of rights. Unlike the bundle of European rights, a unitary patent will not require validation in each individual member state. The translation requirements for the unitary patent will also be significantly simpler and cheaper.

The unitary patent will also be subject to a single set of renewal fees.

The unitary patent offers savings not only in terms of administration costs, but also for enforcement. A patentee will only need to enforce their patent in one court, rather than in multiple national courts, avoiding duplicated litigation. Moreover, a unitary patent will be subject to a single set of rules, as opposed to the legislation of multiple countries.

Fees

Renewal fees for the Unitary Patent were adopted by the participating countries in December 2015. A table of fees is available.

Countries participating

The two EU Regulations establishing the unitary patent were agreed using the enhanced cooperation procedure which enabled a smaller group of EU countries to make progress after many years of delay.

Currently 26 EU countries are participating in the unitary patent, Spain and Croatia are not covered by the Unitary Patent regulation although they may join at a later date.

Further information

More information on the unitary patent can be found on the EPO website, including detailed questions and answers.

The Unified Patent Court: overview

The Unified Patent Court agreement

On 19 February 2013 the UK Government signed an intergovernmental agreement (the ‘agreement’) along with 25 other EU member states to create a Unified Patent Court (UPC) which will be a new specialist patents court common to participating states. This court will primarily have competence to hear disputes regarding the validity and infringement of the new unitary patent as well as European bundle patents granted by the European Patent Office (EPO). It will also have competence over actions concerning infringement and validity of Supplementary Protection Certificates, for pharmaceutical and plant protection products, based on European bundle patents and unitary patents. The UPC will not have competence over national patent rights such as those granted by us and other national patent offices.

Entry into force

The UPC will begin operations three months after 13 member states including the UK, France and Germany have ratified the Agreement.

The status of ratification for each Member State can be found on the EPO website.

Implementation

The signatory states of the UPC agreement are working together to ensure that the UPC will be fully operational by the time the agreement comes into force.

To this end they have formed a preparatory committee which will oversee work in five main areas:

  • the legal framework of the UPC
  • financial aspects of the court
  • information technology
  • facilities and HR
  • judicial training

Further details can be found on the official website of the preparatory committee.

The UK has set up a dedicated task-force comprising officials from our office, Ministry of Justice and HM Courts and Tribunals Service who are working with other government departments and business to ensure successful delivery of the UPC.

The transitional period and opt-out

During a transitional period of at least seven years (which may be extended by a further seven years), infringement and validity actions on European bundle patents may still be brought before national courts or other national competent authorities.

Additionally an owner of a European bundle patent will be able to opt out of the jurisdiction of the UPC on a patent by patent basis. In this case, the European bundle patent will remain in the jurisdiction of national courts. For example, if the owner of a European bundle patent valid in the UK chooses to opt out that patent, any litigation will be in the UK courts.

Once a patent has been opted out of the UPC’s jurisdiction it can be opted back in at any time before the end of the transitional period, providing no action has already been brought before a national court.

These transitional arrangements do not apply for the new unitary patent, for which cases will always be heard by the UPC.

Applicable law

The court shall base its decisions on EU law, the agreement, the EPC, other international agreements applicable to patents which are binding on all the participating states (e.g. the TRIPs agreement and the PCT) and national law.

The agreement sets out the infringement provisions (the acts that a patent allows its owner to prevent others from doing) for European bundle patents and unitary patents. Currently, infringement of European bundle patents is a matter for national law (sections 60 – 71 of the Patents Act 1977). Changes to the patents act 1977 will be needed to ensure that the infringement provisions for European bundle patents and unitary patents that are set out in the UPC agreement are applied in UK law.

Enforcement of UPC decisions

Any ruling by the court on a patent will be simultaneously valid in all countries in which that patent has been validated and will be enforced under procedures governed by the law of the country or countries where enforcement takes place.

Fees

UPC fees were agreed at the Preparatory Committee in February 2016. The full proposal includes details on support for small and micro enterprises and ceilings for recoverable costs.

Rules of procedure

The preparatory committee of the UPC agreed the Rules of Procedure for the court in October 2015, following a public consultation and oral hearing. For more information, please see the Unified Patent Court Rules procedures.

The Unified Patent Court: structure

The Unified Patent Court (UPC) will be formed of a Court of First Instance (CFI) and a Court of Appeal.

Structure of the court

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The CFI comprises of

  • local and regional divisions, which will primarily hear patent infringement cases
  • a central division, which will hear cases relating to the validity of patents

Member states can either host a local division or participate in a regional division with other member states.

Alternatively states may choose not to have a local or regional division. In this instance, all cases for infringement in their territory will be heard in the central division.

It is anticipated that each member state will either host one or more local divisions or enter into regional partnerships.

The central division will have its seat in Paris and will have two specialist sections in London and Munich.

Cases will be allocated to each section of the central division according to technology sector as defined by the International Patent Classification applied to the patent.

London will hear cases relating to chemistry, including pharmaceuticals and the life sciences (patents classified under IPC classes A and C).

Munich will hear cases relating to mechanical engineering (IPC class F). All other cases will be heard by the Paris central division.

The Court of Appeal is based in Luxembourg.

Where cases will be heard

Infringement actions may be started at the local or regional division in the participating state where the alleged infringement took place or, where the defendant is based.

When filing a claim for infringement the plaintiff must state which division should hear the action and provide a justification of their choice of division.

The defendant may then challenge the choice of division.

Actions which challenge the validity of a patent will be heard by the central division with responsibility for the technology sector relevant to the patent.

In terms of counter-claims for revocation, where the defendant is accused of infringing a patent but uses the defence that the patent is invalid, the panel of judges at the local/regional division will decide where to hear the case.

The panel can choose to

  • send the whole case to the central division (infringement and revocation)
  • send the revocation case to the central division and hear the infringement case separately at the local/regional division (a process known as bifurcation)
  • hear the entire case at the local/regional division

Panels of judges

Cases at local and regional divisions will generally be heard by panels of three legally-qualified judges, whose nationality will depend on the court’s location and the number of cases heard at that division (see article 8 of the agreement).

At the request of one of the parties in the dispute a technically-qualified judge with relevant skills may also be assigned to the case.

Should both parties agree, the case may also be heard by a single legally-qualified judge.

Composition of the panels of judges at the Unified Patent Court

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For cases at the central division, judges will sit in a composition of

  • two legally-qualified judges who are nationals of different states
  • one technically-qualified judge, allocated from the pool of judges, who has qualifications and experience in the field of technology concerned

At the Court of Appeal judges sit in a multinational composition of five judges, comprising

  • three legally-qualified judges
  • two technically-qualified judges with experience in the appropriate technology

Further information

Further information is available on the preparatory committee website.

Published 22 May 2014