What is the Unified Patent Court (UPC) and when will it open?

The UPC will be a forum for central litigation of a unitary patent. It will also have jurisdiction over European patents that are not opted out of the UPC’s jurisdiction.

The creation of the UPC derives from the Agreement on a Unified Patent Court (the UPCA or UPC Agreement). This is an agreement between almost all of the EU member states. The only EU member states not currently party to the UPC Agreement are Croatia, Poland and Spain; although they have the option to join in the future.

The UPC is expected to start operating fully towards the end of 2022 or in early 2023, and only has some basic functionality before that point.

In order for the UPC to become fully operational, the UPC Agreement must first come into force. This will be three months after France, Germany, Italy and a minimum of 10 other participating EU member states have all ratified the UPC Agreement and deposited their ratifications with the European Council. This is the step of making the UPC Agreement part of national law in each county and officially registering that.

France and Italy, along with more than the necessary number of other participating EU member states, have ratified and deposited their ratification with the European Council. Additionally, Germany has ratified the UPC Agreement. This means the deposit of the Germany ratification is the only formal step left before the three-month “Sunrise” period can start with the UPC becoming fully operational at the end of that period.

The consequences of UPC jurisdiction

The UPC is intended to replace national courts as the competent forum for hearing revocation and infringement actions and a number of other matters on European patents valid in the participating countries (all EU member states except for Croatia, Poland and Spain). For the participating countries, national courts will only be able to hear infringement and revocation actions in relation to European Patents that have been opted out from the exclusive jurisdiction of the UPC.

For unitary patents, i.e. European patents for which a request for unitary effect has been made, it will not be possible to opt out of the jurisdiction of the UPC.

Patents that are granted by national authorities, for example the Netherlands Patent office, will still be litigated before national courts, such as the national courts of the Netherlands. The UPC will have no jurisdiction over patents granted by national patent offices.

The UPC will also have no jurisdiction over European patents that are validated in countries that are not party to the UPC agreement (or that have yet to ratify the UPC agreement). For example, a European patent that is validated in the UK, Spain or Norway can only be revoked by competent UK, Spanish or Norwegian authorities (unless centrally revoked via the EPO’s opposition procedure, which will remain unchanged).

The jurisdiction of the UPC will extend to all European patents with unitary effect (also referred to as a Unitary Patent or “UP”). This means that, for a European patent from which a UP is created that has also been “validated” in any other country outside of the UP countries, including any EU member state yet to ratify the UPC agreement or, for example, the UK, the UPC will only have jurisdiction over the UP and not over the other validations.

The UPC will also have jurisdiction over SPCs based on European patents and unitary patents, although the exact provisions surrounding SPCs are yet to be finalised. We will be publishing a separate article on this topic.

Opting out of the UPC

There will be a transitional period of at least seven years running from when the UPC opens. During this period it will be possible for European patents, published European patent application and SPC owners (who do not want unitary effect) to opt out of the jurisdiction of the UPC. Therefore, for European patents that are opted out of the UPC, national courts, in the countries where the European patent is validated or designated, will continue to have jurisdiction. However, if you have chosen to have a unitary patent, it is not possible to opt out – the UPC will have exclusive jurisdiction on matters of revocation and infringement.

It will be necessary to opt out any already granted European patents and published pending European applications, if you do not want them to fall under the jurisdiction of the UPC. It will be possible to start filing requests to opt out once the Sunrise period begins.

Should you have questions about the UPC, please contact us here, at gje@gje.com or through your usual GJE contact.