Introduction to the Unitary Patent and the Unified Patent Court
The European patent with unitary effect , also called "Unitary Patent", is a new type of patent in force since 1 June 2023. In reality, it is a normal European Patent, granted by the European Patent Office following the traditional procedure; however, in addition, the holder requests the unitary effect, which he/she can do within one month of the granting of the patent. This makes the patent enforceable in all EU Member States which, at the date of its granting, have signed and ratified the agreement establishing the Unified Patent Court. Therefore, the single national validations required for traditional European Patents are not needed.
The Unitary Patent is currently effective in 17 States: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. At the end of the ratifications, it will be effective in 24 States, i.e. all the current EU Member States except Spain, Croatia and Poland, which, for various reasons, are not in the Unitary Patent system.
In any case, this is fewer States than those covered by the European Patent Convention, which are currently 39 and also include, for example, Great Britain and Switzerland. Consequently, alongside the Unitary Patents, European Patents will continue to exist for the States not covered by the Unitary Patent, for which it will be necessary to proceed with the traditional national validations. Furthermore, in some States – including Italy, as per our previous post here – Unitary Patents and National Patents may coexist on the same invention by the same inventor.
The Unified Patent Court or UPC is a new court common to the EU Member States that have signed and ratified its founding agreement. To date, these are the 17 States mentioned above, which, as mentioned, will become 24 at the end of the ratifications, i.e. all the current EU Member States except Spain, Croatia and Poland.
The UPC decisions are binding in all these States. This means, for example, that in the event of a patent infringement, a single action is sufficient to obtain an injunction enforceable in all States, without the need to initiate several parallel proceedings before individual national courts. Conversely, and obviously, this also applies to revocation actions, i.e.: with a single successful action, the revocation is obtained in all the States in question.
As regards its jurisdiction, the UPC has:
a. exclusive and mandatory jurisdiction for disputes relating to Unitary Patents and related Supplementary Protection Certificates;
b. concurrent jurisdiction with the national courts for "traditional" European Patents and related C Supplementary Protection Certificates which have not been opted-out from the UPC system.
In fact, during a transitional period of 7 years, which can be extended by a further 7, the holders of "classic" European Patents and the related Supplementary Protection Certificates (SPC) can opt out their patent or SPC from the competence of the UPC, provided that the patent/certificate is not already the subject of proceedings pending before the UPC. This "opt out" must be made by sending a communication to the UPC Registry within one month of the end of the transitional period.
For patents that have been opted out, national courts will continue to have exclusive jurisdiction for the life of the patent, unless the opt-out is withdrawn. This withdrawal, in turn, can be done as long as the patent/certificate is not already the subject of proceedings before a national court. Furthermore, once the opt-out has been withdrawn, it will no longer be possible to opt-out again for that patent, even if the patent owner changes.
The UPC, therefore, has no jurisdiction over:
i) opted-out European patents;
ii) national patents;
iii) other issues such as fair reward for the employee inventor and the right to a patent.
[Last updated: July 2023]
