Unitary Patent & Unified Patent Court: FAQs

Q. When will the Unitary Patent (UP)/Unified Patent Court (UPC) come into force? What is the time scale for the introduction of the new system?

A. The UP/UPC will come into effect on 1 June 2023.

Germany deposited its instrument of ratification on 17 February 2023, as well as triggering the “sunrise period”. The sunrise period is particularly important for the registering of “opt-outs” which are addressed below.

Q. Does the UP replace the existing system for obtaining European patents?

A. NO! The UP provides an additional option for patentees. It will still be possible to obtain classical European patents instead of a UP, and indeed this will be essential to obtain protection in those countries that are not part of the UP but which are members of the European Patent Organisation.

Q. What is a UP?

A. A UP, formally known as a “European patent with unitary effect”, is a single patent for all European Union states that are participating in the UP system and that have ratified the Agreement on a Unified Patent Court (UPC Agreement). It is obtained through exactly the same prosecution procedure as a classical/ traditional European patent, but aftergrant results in a single patent for the participating member states, as opposed to the bundle of national patents that result from validation of a classical European patent.

Q. What are the benefits of a UP?

A. A UP permits a patentee to obtain a single patent in multiple countries for a lower cost than would be possible by national validation, due to eliminating the costs of validation and the costs of individually renewing in each country. Furthermore, the patentee will be able to enforce the patent for all participating territories in a single action.

Q. Which countries are covered by a UP?

A. 17 EU countries have currently ratified the UPC Agreement and deposited their instruments of ratification. These are Austria, Belgium, Bulgaria, Denmark, Estonia, France, Finland, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

Other countries which have signed the UPC Agreement but not yet ratified are Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. These countries are unlikely to be covered in the short term.

Spain, Croatia, and Poland are EU members but are not participating in the UP at present.

Along with Norway, Switzerland, Turkey, and the other European Patent Convention, non-EU, member states, the United Kingdom is not participating in the UP.

Q. Will the UP save on costs?

A. The fees for renewal of a UP have been set at the combined total of the renewal fees of the four countries where European patents were most commonly validated in 2015. Patentees who previously validated in more than four or five countries will tend to save on renewal costs, while patentees who validated in fewer countries will find the UP more expensive, but will of course have protection in more territories.

Q. What is the procedure for obtaining a UP?

A. A UP is obtained by filing a request with the European Patent Office (EPO) at the latest within one month of the date of grant. During a seven-year transitional period it will be necessary to file a translation of the entire application into another EU language, including if the application is in English.

This means that UPs start as European patent applications filed with the EPO as now and prosecuted in the same way. It is only at grant that applicants will need to decide whether to obtain “classical” European patents through the system of validation that has long been in place or to elect a UP to cover the countries taking part in the new system.

Opposition and appeal procedures at the EPO are unchanged and will have the same effects for UPs as for conventional validations.

Q. How will I get protection in countries which are not participating in the UP?

A. Protection in other countries is unchanged. For example, if you wish to cover France, Germany, Italy, Spain, and the UK, you can request a UP to cover France, Germany, and Italy (and 14 other countries), and you can separately validate in Spain and the UK to obtain national patents (EP(ES) and EP(UK)) in those countries. You can of course validate to obtain separate French, German, and Italian patents as an alternative to the UP.

Q. Will UK (and other nonparticipating country) European patent attorneys be able to apply for UPs?

A. YES! The prosecution procedure for EPO patents remains unchanged and requesting a UP is simply another option (alongside validation) that your UK European patent attorney will provide.

Q. What is the role of the UPC?

A. The UPC is a new court system that will have jurisdiction over UPs, as well as over classical European patents in the participating countries, unless those classical European patents are optedout.

Q. What does it mean to opt-out a patent (or patent application)?

A. For a transitional period of seven years, it will be possible to register an opt-out for a classical European patent with the UPC Registry, which will mean that any action relating to that patent will have to be taken in the national