With the launch of the Unified Patent Court (UPC) and the Unitary Patent (UP) fast approaching, there is a large amount of new terminology to get to grips with, which can be initially confusing. In this blog, we take a look at some of the common terms and phrases relating to the UPC and UP system and break down what they mean. Terms in italics are also defined in this Glossary.
Unitary Patent (UP)
- A single patent right that has unitary effect across all the EU member states that are part of the Unitary Patent and Unified Patent Court System. A unitary patent can be enforced or attacked in all of the UPC member states in a single court action, unlike traditional patents which require a separate action in each national court.
- A UP can be obtained in a similar manner to a ‘traditional’ European Patent (EP), by filing a patent application with the European Patent Office (EPO) where it is examined, and eventually granted.
- A patent owner is not permitted to have both a traditional EP patent and a Unitary Patent covering the same invention in the same country. Therefore, if you validate a granted EP patent as a Unitary Patent, then you may not also validate it as a traditional EP in any of the UPC Member states.
Unified Patent Court (UPC)
- A single court for handling infringement and validity disputes relating to Unitary Patents. The Unified Patent Court will have exclusive jurisdiction for disputes relating to Unitary Patents.
- During the transitional period, the Unified Patent Court and the national courts will have joint jurisdiction for disputes relating to traditional European patents which are not opted out, meaning that an infringement or validity action may be brought in either the UPC or the relevant national court (subject to certain restrictions). After the transitional period, the UPC will have exclusive jurisdiction for all disputes relating to infringement or validity of European patents.
- The UPC will comprise a Court of First Instance, a Court of Appeal, an Arbitration and Mediation Centre, and a common Registry.
Agreement on a Unified Patent Court (UPCA)
- An international treaty establishing the Unified Patent Court as a court of the member states. The UPCA was agreed between 25 EU member states. The UPCA has been provisionally applicable since 19 January 2022. The UP and UPC will enter into force when Germany deposits its instrument of ratification of the UPCA (see Ratification).
- This occurs when a Local or Regional Division hears and decides on an action for infringement of a patent while another Division hears and decides on an action (e.g. a counterclaim) for invalidity of the same patent. The proceedings are then said to be bifurcated.
Court of First Instance
- Has Central Divisions in Paris, Munich, and one other European city (still to be decided), and additional Local and Regional Divisions in individual member states.
Court of Appeal
- A section of the UPC which hears appeals of decisions of the Court of First Instance. The Court of Appeal is based in Luxembourg.
- A section of the Court of First Instance. The Central Division is the default section of the Court of First Instance for actions relating to countries which do not have a Local or Regional Division. Any action at the UPC can be brought before the Central Division instead of the Local or Regional Divisions. Actions for declarations of non-infringement and actions for revocation must be brought before the Central Division.
- Cases will be divided amongst the three Central Divisions of the Court of First Instance according to their subject matter. The Munich Central Division will handle cases relating to mechanical engineering and the Paris Central Division will handle cases relating to electronics, computer science and physics. A third Central Division, once established, will handle cases relating to chemistry and pharmaceuticals.
- The power of the UPC to revoke a patent centrally, leading to a loss of patent protection in all the participating UPC Member states.
- A temporary measure provided by the EPO in which the applicant can request a delay in issuing the decision to grant a European patent after despatch of a communication under Rule 71(3) by the EPO and before approving the text for grant. This will allow the application to become eligible for unitary patent protection and ensure that the applicant does not miss the opportunity to obtain a Unitary Patent in the transitional period.
Early request for unitary effect
- A temporary measure provided by the EPO in which the applicant can file early requests for unitary effect before the start of the Unitary Patent system. This will allow the EPO to register unitary effect immediately when the UPC comes into force. The request for early effect may only be filed after the despatch of a communication under Rule 71(3) by the EPO.
- Where only a single court has the power to handle a dispute. In the UP system, only the UPC has the power to handle a dispute relating to Unitary Patents.
- A section of the Court of First Instance. Deals with actions connected to the country which hosts the Local or Regional Division.
UP/UPC Member states
- The countries which have agreed to participate in the Unitary Patent system. It is expected that 17 EU member states will initially be part of the UP and UPC system, with more joining over time. The first Unitary Patents will cover these 17 states.
- It is important to note that a Unitary Patent will only ever cover the Member states which were part of the UP and UPC system at the time the UP was granted. In other words, a UP will not extend to cover new Member states that join the system after that UP came into force.
- Requesting that a granted European Patent or a European Patent application is exempted from the jurisdiction of the UPC. This means that any proceedings relating to infringement or invalidity of the patent must be brought in the national Court of the states in which the European patent has effect.
Period of Provisional Application (PAP) of the UPCA
- A period during which final preparations for the operation of the UP system are completed. We are currently within this period. The period will end once the preparations are complete, and Germany deposits its instrument of ratification of the UPCA.
- The process of obtaining parliamentary approval of the UPCA. The UPCA must be ratified by 13 countries before the UP and UPC can enter into force.
- A section of the Court of First Instance. Deals with formalities, including opt-out requests. Based in Luxembourg.
- The period of time between Germany ratifying the UPCA and the UPC coming into force. It will be possible to file opt outs of European Patents from the UPC during this period, so that the European Patents are outside of the jurisdiction of the UPC from the outset. This period is expected to last three months.
- A period lasting between 7 to 14 years (exact length TBC) after the UPC comes into force, during which the UPC and the national Courts of the EU member states participating in the UPC will share jurisdiction for proceedings relating to traditional European patents. Traditional European Patents may also be opted out of the UPC during this period, provided that proceedings are not pending at the UPC in relation to the patent. After this period has ended, the UPC will have exclusive jurisdiction over Unitary Patents and traditional European Patents.
- The effect of providing uniform protection across all participating UPC member states. A Unitary Patent may be validated by filing a request for unitary effect.
- The process of bringing a traditional European Patent into force in an EPC contracting state and/or as a Unitary Patent under the UP system. Validation of a UP requires filing a request for unitary effect, accompanied by a translation of the patent into English (if the European patent was granted in French or German) or an official language of an EU country (if the European patent was granted in English) within one month of the date of grant of the European Patent.