In short, the unitary patent is a granted European patent to which a “unitary effect” is conferred upon request by the proprietor, with the consequence that it becomes a single patent effective in all EU member states participating in the Agreement, with no need for validations in that countries .
This tool is in addition to the “classical” European patent, but it will also impact on it. It is both an opportunity and a risk, not only for whom can be involved in infringement, but for the patentee himself, hence it should be known adequately and in advance in order to get prepared to it.
Following Germany’s ratification on February 17th, 2023, the system will enter into force on June 1st, 2023, after a “sunrise period” of three months.
The system is defined by a “unitary patent package“, comprising two EU Regulations nos. 1257/2012 e 1260/2012, the Agreement on the Unified Patent Court, and a set of Implementing Regulations. It comprises two pillars: the European Patent with Unitary Effect and the Unified Patent Court (UPC).
The European Patent with Unitary Effect
The patent is a single patent for invention which is valid on all EU member states that completed the procedures to ratify the Agreement; on January 31st, 2023, those states were 17, among 24 signatories .
A unitary patent derives from a European patent, granted through the usual procedure. Once the patent is granted, the patentee can request unitary effect, without the need to validate the patent country by country as it happen today.
If no request is made, the patentee can still validate the patent in each country. In any case, validations will remain the only way to validate the patent in the EPC member states that do not participate to the unitary patent system. In this respect, EPC member states are currently 39, while UPC member states are currently 17 (potentially 24). Among the non participating states, there are three EU members which did not signed the Agreement, i.e. Spain, Poland, and Croatia, as well as all countries that are not EU members, in particular United Kingdom, Switzerland, and Turkey.
An important difference between “classical” European patent and unitary patent is that, the former originates a mutually independent “bundle of national patents” that can have different outcomes, while the latter has a unitary character in all countries of the Agreement, meaning that the patent can’t be abandoned only for some participating countries while maintained for others, as it is for classical patent, and that invalidation of the patent during litigation takes effect in all countries participating in the Agreement.
In practice, the owner of a European patent who intends to validate it in one or more participating countries as well as in one or more non-participating countries can choose between:
√ requesting unitary effect for the participating countries, and validating the patent for the others;
√ keeping the patent without unitary effect, and validating it in each country, participating or not to the Agreement, as it occurs today.
It is important to remind that the window for requesting unitary effect is just 1 month from grant of the patent, and that lacking the request, the European patent remains a “classical” patent. In both cases, the decision is irreversible.
The Unified Patent Court (UPC)
The UPC is a novel multinational court common to the countries participating to the Agreement, that will enter in function together with the unitary patent, and that will have exclusive competence for all European patents, with or without unitary effect, in the territory of the participating countries instead of the national courts, with some exceptions that are presented below.
The UPC comprises a central division that is competent for invalidation actions and for some infringement actions. The division has three sections: the first two sections are located in Paris and Munich, while the third one should be located in London, but is currently to be appointed after Brexit. Milan (Italy) is among the candidates for replacing it.
UPC further comprises local divisions spread among the participating countries, that are competent for infringement actions. One of those divisions are located in Milan (Italy).
The transitional period and the "opt-out" from the exclusive competence of UPC
During a transitional period of 7 years after entry into force of the Agreement, that might be prolonged by additional 7 years, an action for infringement or nullity involving a classical European patent, i.e. without unitary effect, can still be brought before national courts, at the plaintiff’s choice. Moreover, the patentee of such patent can opt-out from the exclusive competence of the UPC, hence maintaining the patent under the exclusive jurisdiction of the national courts, as it is today. According to the prevailing interpretation , the opt-out inter-alia prevents a third party from starting an nullity action before the UPC, which could lead to complete invalidation of the patent in all countries participating in the agreement.
The request for opt-out can be filed at the UPC at any moment during the life of the patent, even before grant, unless the patent has been already involved in a litigation before the UPC, because in that case opt-out will be ruled out.
Since an action could be started by a competitor, e.g. in order to request invalidation of the patent, opt-out should be applied for as soon as possible. Moreover, since it is not yet clear whether, and in what instances, third parties could start an action before UPC concerning a patent application, which would prevent opt-out, in some cases it is advisable to opt-out as soon as the application is published.
Opt-out can be withdrawn at any moment, unless the patent was not involved in an action before a national court, because in that case the national court remains competent. After withdrawal, the opt-out can’t be reiterated.
Classical vs. unitary patent
The unitary patent system is in addition to, not in replacement of, the current European patent system. Considering the possibility to opt-out classical patents at least for the next 7 years, a decision for requesting unitary effect should be taken only after a comparison between the two systems on a case-by-case basis.
In any case, given the shortness of the window in which unitary effect can be requested – 1 month from grant -, and the irreversibility of the choice, it is advisable to perform a careful and early evaluation of the advantages and disadvantages, both under economic and strategic aspects.
Possible criteria for the above evaluation are presented hereinafter. They are based on the assumption, currently prevailing , that opt-out allows to exclude UPC from all litigations related to a classical patent.
Validation costs for a classical patent – comprising translation and representation costs – depend on how many, and which, countries are chosen, while the request for unitary effect can be made centrally by the same patent attorney who dealt with the grant procedure, and does neither require paying official fees, nor filing translations .
Therefore, in this respect, unitary patent is very cheap. Of course, this only applies for the participating countries, while for the other countries the current regime of validations still applies, with the same costs as today.
Annual renewal of a unitary patent implies paying a single renewal fee, whose amount is as high as about the sum of official fees for renewal a classical patent in 4 countries. As a consequence, if the patentee intents to get a protection in 4+ countries among the participating ones, unitary patent is cheaper in this respect.
Litigation costs – Deterrence
Litigation before UPC will be significantly more expensive compared to a national litigation, in terms of both official fees and legal assistance. The disadvantage depends on how the infringement spreads on the countries of the Agreement, since a single action before the UPC can be cheaper compared to distinct actions before several national courts. Therefore, in this respect, the advantage of a unitary patent compared to a classical, possibly opted-out, patent depends on the presence of the competitors in many countries of the Agreement, and on the territory on which their activity is spread.
The higher deterrence of a unitary patent compared to a classical, possibly opted-out, patent, at least for the higher litigation costs and damages that an infringer could possibly suffer, should also be considered, particularly when the competitor has limited resources for litigation.
On the other hand, with a classical patent it is already possible to act for infringement before a single national court – the most favourable one –, and later decide whether to proceed in other courts in case of a positive outcome of the first action; often, this is not even necessary, since the competitor spontaneousely interrupts infringement in the other countries after the first judgement, to avoid further legal actions. This way of proceeding allows to reduce litigation costs for a classical patent, but it won’t be available for a unitary patent.
Risk of invalidation
A unitary patent can become invalid in all participating countries following a single action before the UPC, while the national fractions of a classical patent are mutually independent, and if the patent is opted-out they can be invalidated only before the national courts through corresponding actions. As a consequence, a unitary patent could encourage invalidation actions by third parties, particularly those interested to clear the market in many participating countries.
The above aspect can bring a high risk for the patentee if the patent is strategically important. In that case, in questo caso, choosing a classical patent and requesting opt-out could be convenient.
Operational flexibility in the participating countries
Exclusive competence of UPC on a unitary patent limits the available procedural options compared to a classical patent with opt-out. Hence, a classical patent allows higher flexibility in choosing litigation strategy, at least in the participating countries.
Regarding patent renewal, a unitary patent can only be abandoned in all participating countries, while a classical patent can be maintained only in some countries and be abandoned in others.
A classical patent is more flexible also concerning transfers. This is because, since each national fraction can be transferred independently on the others, the proprietor may decide to transfer the patent to a third party only for some countries, typically those in which he is no more interested in having the exclusive rights, allowing him to obtain an economic return and to avoid the corresponding burden for maintaining the patent in those countries. This option is not available for a unitary patent, which, in the participating countries, can be transferred only as a whole. In the latter case, one option could be that of granting a license for the patent in those countries only.
The UPC is a new court of a type never experienced before. Despite patent laws in different countries are rather harmonized, the court’s behaviour cannot be completely predicted. Moreover, the procedure has some differences compared to many national procedures, and this can lead to uncertainties in the outcome and, most of all, in the overall cost of an action.
Requesting unitary effect
Unitary effect is requested to European Patent Office within 1 month of the date of publication of the mention of the grant. The request is subject to strict formalities, whose unfullfillment may lead to rejection of the request, hence to impossibility to obtain the unitary effect, given the short time available.
Unitary effect can be requested not before entry into force of the Agreement on the Unified Court, i.e. not before June 1st, 2023. Therefore, patents already granted on May 1st, 2023, can’t enjoy unitary patent. Moreover, patent granted between May 1st, 2023, and June 1st, 2023, will have a shortened window for requiring unitary effect.
In this respect, for European patent applications that are close to grant, the EPO provides two options, upon request:
√ delay the grant of patent to the date of entry into force of the Agreement;
√ anticipated request for unitary effect, in order that EPO can examine the request and, if it founds that it is allowable, register unitary effect as soon as the patent is granted.
The above two options will be available up to the end of the sunrise period, i.e., presumably not later than May 31st, 2023.
Keeping the patent as a “classical” one
To keep the classical patent, it is sufficient to abstain from requesting unitary effect. In that case, the patent remains under the current validation regime, also in countries participating to the unitary patent package.
To enjoy all the advantages of the classical patent, requesting opt-out could be preferable. Even though there is no deadline for opting-out, it is recommended to request it as soon as possible, in order to avoid that a third party interested in invalidating the patent initiates an invalidation action, which would prevent to subsequently request opt-out.
In any case, opt-out can’t be requested before the start of the sunrise period, i.e., presumably from march 1st, 2023.
 On January 31st, 2023, the following EU countries ratified: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Portugal, Slovenia, and Sweden. Signed, but have not ratified yet: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. Did not signed: Poland, Spain, Croatia.
 During a transitional period of at least 6 years, a full translation of the patent in a second language of the EU will be requested. For Italian patentees, that language can be Italian, and, if the European patent was drafted in Italian – as it is usual – the above mentioned translation is already available. Moreover, a compensation scheme is provided, so that a part of the translation costs are reimbursed for SMEs, natural persons, non-profit organisations, universities and public research organisations having their residence or principal place of business within a Member State..
 This interpretation, taken by UPC Preparatory Committee, is not directly derivable from Art. 83(3) of the Agreement, which refers to the “exclusive competence” rather than to the mere “competence”. In fact, a narrow interpretation of the UPC provisions seems not to imply any exclusion of the competence of the UPC in case of an opt-out, but merely the possibility to refer to the national courts all actions for which Art. 32 gives exclusive competence to the TUB, other than infringement and revocation actions, for which Art. 83(1) already envisages that possibility. This interpretation issue was raised from the very beginning and will be solved only in jurisdictional proceedings. More in this article.
Last updated: 08/06/2023
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