UP/UPC facts in a nutshell

During the Sunrise Period, we will regularly compile the most important facts on the Unitary Patent System here.

UP/UPC in a nutshell: Opt-Out

• An Opt-Out withdraws a classical EP right from the jurisdiction of the UPC. Thus, the EP right holder has it in his own hands to clarify jurisdiction.
   
• An Opt-Out can therefore never be declared for a unitary patent - this is always subject to the jurisdiction of the UPC.
   
• In the case of multiple applicants/owners, we recommend that the Opt-Out declaration is always agreed with all applicants/owners in advance.
   
• During the Sunrise Period, the Opt-Out can be declared "safely". From the effective date of entry into force of the UPC on 1 June 2023, an action before the UPC concerning an EP patent for which an Opt-Out has not been validly declared will "log in" the EP patent in the jurisdiction of the UPC. An Opt-Out validly declared within the Sunrise Period will take effect from the entry into force of the UPC on 1 June 2023. An effectively opted-out EP right is then "classically" subject to the jurisdiction of the national courts.
   
• The Opt-Out must be declared via the court's CMS system, not at the EPO.

UP/UPC in a nutshell: Invalidity action before the UPC - the most important differences and facts compared to the invalidity action before the German Federal Patent Court

• No examination of the case ex officio/on the Court’s own motion. Instead, the principle of party presentation is applicable.
   
• Earlier national rights of all participating member states are admissible as prior art for a unitary patent, which significantly expands the scope of potential prior art. For example, a French, Italian or German national prior right will be relevant for the entire unitary patent as prior art.
   
• An invalidity action can be filed for a unitary patent in parallel with EPO opposition proceedings pending for the same patent and already during the 9-months opposition period. Note that the same holds true for a classical EP bundle patent for which no Opt-Out was declared and registered!
   
• An invalidity action can be filed as a counterclaim by the defendant in patent infringement proceedings before the UPC.
   
• Tight time limit regime - if the invalidity action is filed in response to the infringement action, there is little time to adequately prepare the counterclaim.
   
• If the revocation action is successful before the UPC, the patent is revoked centrally.

If you have any questions about "UP/UPC in a nutshell", please do not hesitate to get in touch with your contact person at Eisenführ Speiser!

The unitary patent

The European patent with unitary effect (unitary patent or UP for short) will be another option for protecting technical inventions in many participating EU member states complementing the European bundle patent (EP patent). Unitary patents make it possible to obtain patent protection in all EU member states participating in the new system by filing a single application with the EPO, making the procedure simpler and more cost-efficient for applicants. However, there will be changes from grant onwards, particularly with regard to validation, maintenance and jurisdiction.

Participating states

The European Union consists of 27 member states. Currently, 17 EU member states have committed themselves to participate in the unitary patent protection from the beginning.

Sunrise Period

The Sunrise Period is a period of three months preceding the effective start of the system, which offers the possibility to exclude EP applications or granted EP patents from the jurisdiction of the Unified Patent Court by opting out before the start of its operation.

Opt-Out

The Opt-Out refers to a request procedure by which a classical EP application or an EP patent is withdrawn from the jurisdiction of the future Unified Patent Court, so that the IP right remains subject to national jurisdiction in the member states of the EPC.

The option to opt out will be possible before the effective start of the system (sunrise period) and thereafter during a renewable transitional period of initially seven years and must be filed directly with the Unified Patent Court.

Fee Calculator for the unitary patent

As a service for clients and interested parties, Eisenführ Speiser has developed its own fee calculator for the unitary patent. With this calculator, the (estimated) costs of a unitary patent can be quickly and easily compared with those of various validations of a bundle patent. Thus, the fee calculator is a great help in estimating the costs of individual validation strategies and enables the profitability of a unitary patent to be assessed. In the latest version of the fee calculator, the estimated costs are displayed graphically over the years, so that individual strategies can now be compared even more easily.

You can quickly and easily download the current version of Eisenführ Speiser's fee calculator for the unitary patent in our download area.

 

The Unified Patent Court

After decades of preparation, the Unified Patent Court (UPC) marks a milestone in the development of European law. In a single court procedure with effect for all participating EU member states, decisions will be taken on the infringement and validity not only of unitary patents. The new court will automatically have jurisdiction over the validated national parts of European patents filed after February 2007 (unless an opt-out is declared for these parts).

It is precisely this circumstance that makes the new court relevant for practice from the very beginning. Already on the day of entry into force (expected 1 June 2023.) infringement and nullity actions are expected before the Unified Patent Court.

Jurisdiction and structure of the Unified Patent Court

In first instance, the UPC is organised in a decentralised manner. In addition to its so-called central division, which is divided between Paris and Munich according to technical fields, local and regional divisions of the court are located in several participating member states. In the larger participating member states, there are several local divisions; in alliances of several smaller EU states, joint regional divisions are established. In Germany, the UPC has four local divisions, namely in Düsseldorf, Hamburg, Mannheim and Munich. These correspond to the currently most important locations for patent infringement proceedings in Germany.

The Court of Appeal, the second instance of the UPC, is established in Luxembourg. Both instances can refer legal questions of EU law to the European Court of Justice for a preliminary ruling.

The official entry into force of the UPC Agreement is currently scheduled for 1 June 2023.

Further information

The Unified Patent Court has relaunched its online presence. The new version of the website provides clear information on organisation, opt-out, legal texts, fees etc. and can be found here.

We have compiled detailed answers to all important questions on the new patent system in the White Papers on the Unitary Patent (UP) and the Unified Patent Court (UPC).

In addition, the Eisenführ Speiser online seminar "Your path to the UP/UPC - Successful preparation for the new system" is available in our download area.

Eisenführ Speiser advises and supports you in protecting your IP rights in Europe

We will be happy to advise you on the optimal litigation strategy for your IP portfolio and on how to deal with any uncertainties and implications of the new unitary patent and Unified Patent Court. If you have any questions, please do not hesitate to contact your usual contact person.