An Overview
Unitary Patent
The basic idea is to standardize the maintenance and enforcement of European patents throughout Europe after they have been granted.
Identical application and examination procedure as for the classic European patent.
Upon publication of the patent grant, the patent proprietor must decide (within one month) whether the European patent is to become a unitary patent or whether it is to continue to apply as a bundle of independent individual national property rights.
The unitary patent (patent with unitary effect) can be enforced in a single procedure for the territory of all EU member states where the UPC Agreement applies.
The European Patent Office (EPO) is and remains responsible for granting and maintaining patents.
Upon request, the EP patent will be treated as a single entity for the EU states participating in the UPC (central administration, central annual fees, central new jurisdiction).
Overview UPC member states
Unitary Patent Court
Central, internationally staffed newly created court (UPC).
Responsible for nullity and infringement proceedings for unitary patents as well as for European patents.
Judgments of the UPC have direct effect in all participating EU Member States (National courts have no influence on judgments of the UPC).
Organization:
- Central Chamber: Paris and Munich
- Local chambers: In all major member states. In Germany: Düsseldorf, Hamburg, Mannheim, Munich
- Regional chambers: responsible for several smaller member states
- Court of appeal: Luxembourg
Need for action for owners of European patents and patent applications
Owners of European patents or patent applications should determine their strategy if they do not wish to have a unitary effect of their European patents or patent applications and therefore wish to declare an opt out.
Opt Out | Review Portfolio of European Patents
Patent owners will have to review their entire portfolio of European patents upon entry into force of the Convention to determine whether they wish to exclude the jurisdiction of the UPC.
Exclusion means that national patent offices and national courts remain responsible for the European patent.
In other words, in the case of an opt out, the maintenance and enforcement of the individual national rights arising from a European patent upon grant will continue to be carried out nationally in the individual member states.
Sunrise Period | 3 months before entry into force of the UPC Convention
Period immediately preceding the entry into force of the UPC Convention during which owners of classical European patents and patent applications may opt out of the jurisdiction of the UPC.
Existing European patents and patent applications automatically fall under the jurisdiction of the UPC unless they are rejected (= opt out).
Pending European patent applications may be subject to early requests for unitary effect of the European patent to be granted or delay of grant in order to obtain unitary patents immediately [further information].
Opt In | Withdrawal of Opt Out
Patent proprietor or applicant may selectively revoke the declared opt out as long as no national invalidity proceedings have been initiated in a participating member state.
The European patent or patent application will thus be included in the Unified Patent Court system.
EPA | Uniform Effect Request.
Request must be filed with the EPO, for which a separate form UP 7000 will be available.
Uniform effect applications should preferably be submitted online.
Consulting
In principle, patent owners will be free to decide whether their European patents should act as unitary patents for a long transitional period (at least 7 years) even after the entry into force of the UPC Agreement.
We will be happy to assist you with strategic considerations in connection with the unitary patent and the Unified Patent Court (UPC) as well as with the preparation of a decision paper for your patent portfolio.
Links
Additional information and current developments on the Unitary Patent and the Unified Patent Court (UPC) can be found on the following pages.
EPO | European route: Unitary Patent & Unified Patent Court
EPA Dashboard | Requests for unitary effect (on a daily basis)
UPC judgments published | Decisions and Orders
Regarding Justus Kreuels:
Justus Kreuels, German and European Patent Attorney, studied mechanical engineering at the TU Munich and the RWTH Aachen. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.