The purpose of this article is to ensure that readers are aware of the options available under the Unitary Patent system. We outline some key facts below and advise you to contact your usual Marks & Clerk attorney or refer to our UPC hub for further detailed information.
Unitary Patent
A Unitary Patent (UP) is a single patent that will cover multiple (but not all) European Union countries. European patent applications continue to be examined and granted by the European Patent Office. Once granted, proprietors can choose to:
- Validate the European patent nationally in any designated state, resulting in a single national patent in that state (traditional method).
- File a request for unitary effect of the European patent resulting in a single Unitary Patent that covers all UPC participating states (as at the date of grant).
- A combination of both of the above options, i.e., file a request for unitary effect covering all UPC participating states, as well as validating nationally in other designated states.
Note that, for each of these options, the European patent remains open to opposition before the European Patent Office (EPO) for nine months from the date of grant (i.e. there is no change to the opposition provisions before the EPO).
UPC Participating states
As of April 2023, out of 44 states covered by the European Patent Convention (listed below), 17 of these are UPC participating states (marked with an asterisk):
Albania
Austria*
Belgium*
Bosnia and Herzegovina (extension state)
Bulgaria*
Cambodia (validation state)
Croatia
Cyprus
Czech Republic
Denmark*
Estonia*
Finland*
France*
Germany*
Greece
Hungary
Iceland
Ireland
Italy*
Latvia*
Liechtenstein
Lithuania*
Luxembourg*
Malta*
Moldova, Republic of (validation state)
Monaco
Montenegro
Morocco (validation state)
North Macedonia
Norway
Poland
Portugal*
Romania
San Marino
Serbia
Slovakia
Slovenia*
Spain
Sweden*
Switzerland
The Netherlands*
Tunisia (validation state)
Turkey
United Kingdom
To obtain a unitary patent, a request for unitary effect must be filed with the EPO within one month of grant. A complete translation of the patent must be submitted either at the same time or within one month of an invitation to provide it. This is a much shorter period than that typically allowed for traditional validations and translations, so we recommend that a decision is made regarding whether to obtain a unitary patent at an early stage of the grant process.
New Court - the Unified Patent Court (UPC)
The new court is an international court common to all UPC participating states, and will have jurisdiction over all disputes concerning Unitary Patents. Such disputes will not be handled by national courts.
The new court will also have jurisdiction over disputes concerning 'traditional' non-unitary European patents that are validated in UPC participating states, as well as any disputes concerning pending European patent applications, unless the application or patent has been 'opted out' of the competence of the UPC.
Of particular note to patent holders is that all 'traditional' non-unitary European patents that are validated in UPC participating states will be open to central revocation unless they have been opted out of the competence of the UPC. This means that, where a European patent is not opted out, a third party can bring a single action to revoke all of the validations in UPC participating states.
The aim is that the UPC will ultimately replace the national patent courts in UPC participating countries.
Opting out of the UPC
If you wish to opt your application or patent out of the jurisdiction of the UPC, you may do so any time after publication providing no action has already been brought before the UPC. As soon as any action has been brought before the UPC, the application or patent will remain under the exclusive jurisdiction of the UPC and cannot then be opted out. As the UPC may have competence to hear actions regarding pending European patent applications which have not been opted out, we recommend that opt out requests are made as soon as the European publication number is known.
Withdrawing an opt-out
After an application or patent has been opted out, the opt out may be withdrawn once, putting the application or patent back in to the jurisdiction of the UPC. No further opt outs will then be possible and the application or patent will remain under the exclusive jurisdiction of the UPC.
Unitary Patents cannot be opted out of the UPC. If a request for unitary effect is filed on a patent that has been opted out the opt out will be automatically withdrawn in respect of that patent.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
