FAQs

Frequently Asked Questions relating to the new Unitary Patent System

1. What is a Unitary Patent?

  • A Unitary Patent (or “European Patent with unitary effect”) will allow patent applicants to acquire unitary patent protection in all countries which are Unitary Patent Participating Member States at the time of grant of the Unitary Patent (26 Member States as of January 2017 – see our interactive map).
  • Applicants will be entitled to apply for a national patent, a European Patent and/or a Unitary Patent.
  • The initial examination and registration procedure for Unitary Patents involves applying for a European Patent at the European Patent Office. Applicants will have one month from publication of the grant of the European Patent to file a “request for unitary effect”.
  • A Unitary Patent will provide uniform protection and will have equal effect in all Unitary Patent Participating Member States. A Unitary Patent can be limited, transferred or revoked only in respect of all Participating Member States. However, a Unitary Patent may be licensed for all or some of the territories of the Unitary Patent Participating Member States. 

2. How much will a Unitary Patent cost?

  • The costs of the examination phase of a Unitary Patent before the European Patent Office will be the same as those of a European Patent; but translation costs will be lower because only one additional translation will be required for Unitary Patents. 
  • The proposed renewal fees for Unitary Patents have been set based on the renewal fees currently paid for the four countries in which European Patents are most frequently validated today, i.e. the “True Top 4” (France, Germany, the Netherlands and the UK).
  • The proposed renewal fees should correspond to a 78% reduction compared to current renewal fees for a European Patent validated in 25 Member States. However, for European Patents designating a limited number of Member States, the renewal fees of a European Patent (vs. a Unitary Patent) may be cheaper.

3. What is the structure of the Unified Patent Court?

  • The UPC will consist of:
    • A Court of First Instance, which will include: 
      • A Central Division (seated in Paris, with sections in London and Munich).
      • Local and Regional Divisions (which can be set up on request by one or more Contracting Member States: one division for every hundred patent cases commenced in the Contracting Member State per year).
    • A Court of Appeal in Luxembourg.
    • A Patent Mediation and Arbitration Centre (in Ljubljana and Lisbon).
    • A Training Facility for judges (in Budapest).
    • See our interactive map for more details.
    • Note that the Court of Justice of the European Union will be able to receive requests for preliminary rulings on matters of European Union law from the Court of First Instance and the Court of Appeal. Its role will be to ensure the correct and uniform interpretation of Union law, and its decisions will be binding on the UPC.

    4. Who are the judges composing the UPC?

    UPC divisionNumber and types of judges
    Central division
    • Two legally qualified judges from different Contracting Member States.
    • One technically qualified judge.
    • Before the Court of First Instance, parties may also agree to have their case heard by a single legally qualified judge.
    Local division (<50 cases per year)
    • One national legally qualified judge.
    • Two non-national legally qualified judges.
    • Additional technically qualified judge upon request by one of the parties.
    • Before the Court of First Instance, parties may also agree to have their case heard by a single legally qualified judge.
    Local division (>50 cases per year)
    • Two national legally qualified judges.
    • One non-national legally qualified judge.
    • Additional technically qualified judge upon request by one of the parties.
    • Before the Court of First Instance, parties may also agree to have their case heard by a single legally qualified judge.
    Regional division
    • Two regional legally qualified judges.
    • One non-regional legally qualified judge.
    • Additional technically qualified judge upon request by one of the parties.
    • Before the Court of First Instance, parties may also agree to have their case heard by a single legally qualified judge.
    Court of appeal
    • Three legally qualified judges from different Contracting Member States.
    • Two technically qualified judges.

    5. What is the jurisdiction of the UPC?

    General jurisdiction of the UPC

    The UPC will have exclusive jurisdiction over cases regarding:

    • Unitary Patents
      • Infringement and revocation actions concerning Unitary Patents cannot be brought before national courts.
    • European Patents (except if the proprietor has opted-out: see FAQ 7)
      • However, during the transitional period (7 years from the date of entry into force of the UPC Agreement, extendable by an additional 7 years), the UPC and national courts will have a shared jurisdiction to hear cases regarding European Patents (except if the proprietor has opted-out).
    • Supplementary Protection Certificates (SPCs) issued for a product protected by a Unitary Patent or a European Patent (except if the proprietor of the patent has opted-out).

    The UPC will be entitled to:

    • Grant provisional or permanent injunctions applicable in all Unified Patent Court Contracting Member States.
    • Revoke Unitary Patents and/or European Patents with effect in all Unified Patent Court Contracting Member States.

    Jurisdiction of the divisions of the UPC (Forum Shopping)

    Infringement

    • Local or regional division of the place of infringement, or
    • Local or regional division of the defendant’s domicile.

    Revocation and declaration of non-infringement

    • Central division.
    • Local or regional division if an action for infringement between the same parties and relating to the same patent is pending before this division.

    Non-EU defendant

    • Local or regional division of the place of infringement, or
    • Central division.

    General rules:

    • If an action for infringement is brought before a division, any other action between the same parties relating to the same patent shall be brought before the same division.
    • The parties may agree to bring an action before the division of their choice, including the central division.

    Bifurcation

    • Special regime applicable to revocation claims in case of pending infringement action before a regional or local division between the same parties and relating to the same patent.
    • 3 options for the regional or local division:

    1. Proceed with both the infringement and revocation
    2. 
    Refer the whole case to the central division (with parties’ approval)
    3. Refer the revocation claim to the central division and:

    a. Stay the infringement action, or
    b. Proceed with the infringement action.

    6. Which law will the UPC apply?

    The applicable laws will include:

    • European Union law, including Regulation No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, and Regulation No 1260/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.
    • Agreement on a Unified Patent Court of 19 February 2013.
    • European Patent Convention.
    • Other international agreements applicable to patents and binding on all the Contracting Member States.
    • National law.

    Factors relating to the applicable law:

    • The Agreement on a Unified Patent Court contains statutory provisions regarding infringement.
    • Validity will be assessed based on the European Patent Convention.
    • National law will apply to Unitary Patents as objects of property (ownership, licences, etc.).
    • UPC can request preliminary rulings from the CJEU on matters of European Union law.

    7. Is it possible to opt-out from the jurisdiction of the UPC?

    For Unitary Patents: No

    • UPC exclusive jurisdiction is mandatory.

    For European Patents: Yes

    • European Patent proprietors may opt-out from the jurisdiction of the UPC, on a patent-by-patent basis, in which case national courts remain (exclusively) competent for the lifetime of the patent.
    • Opt-out will be admissable from the entry into force of the protocol for a provisional application of the UPC Agreement (see FAQ 11 and below) and until the expiration of a transitional period of 7 years from the date of entry into force of the UPC Agreement and as long as no action has been brought before the UPC.
    • Locked-in situation: once an action (whether pending or concluded) has been brought before the UPC, the opt-out is no longer admissible.
    • The opt-out can be withdrawn as long as no action has been brought before a national court.
    • Locked-out situation: Once an action has been brought before a national court, it is no longer possible to withdraw the opt-out.
    • No opt-out fees.

    Sunrise Period: European Patent proprietors will be entitled to file an early opt-out declaration before the Court opens

    • The Preparatory Committee plans the sunrise period to start as early as September 2017.

    8. What is the timeline for proceedings before the UPC?

    Infringement Action Timeline (with counterclaim for revocation and no bifurcation)


    Infringement Action Timeline (if no counterclaim for revocation)

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    9. What language will be used in the UPC?

    In general, the parties can always agree to use the language of their choice.

    DivisionLanguage(s) of the proceedings
    Central Division
    • Language of the patent.
    Local or Regional Division
    • National or regional languages, or
    • One official language of the European Patent Office (English, French, German), or
    • Language of the patent (with parties’ approval).
    Court of appeal
    • Language of first instance, or
    • Language of the Patent (with parties’ approval), or
    • One official language of the Contracting Member States (President’s decision with parties’ approval).

    10. What are the Court costs for UPC proceedings?

    On 26 February 2016, the UPC Preparatory Committee announced that it had agreed the rules on Court fees, “subject to legal scrubbing”:

    • Infringement and revocation actions (or counterclaims) before the UPC require the payment of Court fees, consisting of a fixed fee and, for certain claims, an additional value-based fee.
    • The fixed fee for claims relating to infringement (infringement action, counterclaim for infringement, action for declaration of non-infringement, action for compensation for licence of rights) is €11,000 and an additional fixed fee of €3,000 is due for applications to determine damages.
    • In respect of the above actions that exceed a value of €50,000, additional value based fees will be due, ranging from €2,500 (for values up to and including €750,000) to €325,000 (for values exceeding €50,000,000).
    • A fixed fee of €20,000 is due for an independent revocation action.
    • For counterclaims for revocation, the fee will be the same as the fee of the related infringement action, subject to a €20,000 cap.
    • Additional fees are due for appeal proceedings.
    • Small and micro-enterprises are entitled to pay only 60% of the respective fee. 

    11. Timeline: When will the system go live?

    • Following developments in the UK and Germany and the general status of ratification in other signatory states, the Preparatory Committee announced in September 2017 that the pending German constitutional complaint will cause delay to German ratification of the UPC system and that it is now difficult to estimate when the UPC system will go live. However, the Preparatory Committee has said that it expects that when the UPC system goes live, it will begin to operate with close to 20 contracting member states.
    •  
    • The Federal Constitutional Court (Bundesverfassungsgericht) has recently asked further third parties to comment on the complaint. The deadline for all third parties to provide comments is the end of 2017. The effects of the constitutional complaint are currently difficult to predict. For further details, please see here.

    12. What is the impact of the German constitutional complaint in respect of ratification of the UPC Agreement?

    • Following the German constitutional complaint and an associated request for interim measures, the process for ratification of the UPC Agreement in Germany has been provision-ally halted. The Federal Constitutional Court (Bundesverfassungsgericht) has asked the German Federal President (Bundespräsident) to suspend the ratification of the UPC Agreement provisionally. The court’s request does not pre-empt the final decision or the court’s detailed view of the merits of the complaint but aims to prevent irreparable actions before a formal decision is made by the court. The request, however, shows that the court does not consider the complaint to be “obviously unfounded”.
    • The complaint was lodged by a German lawyer who has previously criticised the UPC system. The complaint alleges that there are a number of procedural and substantive issues with the UPC Agreement. It requests that the complaint is referred by the Federal Constitutional Court to the European Court of Justice and that the Federal Constitutional Court finds that the German ratification law implementing the UPC system constitutes a violation of the German constitution. The applicant argues, in particular, that: the ratification law was not passed by the German Parliament (Bundestag) with the requisite majority; there are incompatibilities between the UPC and EU law which violate the German constitution; the UPC lacks an independent and impartial judiciary; and the ratification law does not provide for a sufficient statutory basis for the Rules of Procedure. Further details on the complaint can be found here.
    •  
    • The Federal Constitutional Court asked certain third parties to comment on the complaint. This indicates that the Federal Constitutional Court will likely accept the complaint for adjudication. Such acceptance does not pre-empt the final decision.
    • The effects of the constitutional complaint are currently difficult to predict. The proceedings will further delay the ratification of the UPC Agreement and the Federal Constitutional Court recently asked further third parties to comment on the complaint. The deadline for all third parties to provide comments is the end of 2017. It is currently expected that the complaint will be decided in 2018 and, if the complaint is rejected, the UPC may go live later in 2018. The UPC could be further delayed if, for example, the Federal Constitutional Court refers the case to the European Court of Justice. If the Federal Constitutional Court were to hold the UPC to be unconstitutional, the consequences would be even more significant.

    13. What are the arguments raised before the Federal Constitutional Court in re-spect of the German ratification act implementing the UPC Agreement?

    The complainant raises several arguments which challenge the constitutionality of the German ratification law. The arguments include both formal and substantive points, the most relevant of which are:

    • Majority requirement: The complaint argues that procedurally, the ratification law required a majority of two thirds of the German Parliament (Bundestag) because it was a matter of European Union law. A majority of two thirds was not reached at the vote.
    •  
    • Violation of European Union law: The complaint argues that the UPC violates European Union law in several aspects that also violate the German constitution. In particular, the complaint alleges that: (i) the UPC replaces the national courts and their relationship with the European Court of Justice. This  constitutes a violation of the autonomy of European Union law and the completeness of its system of legal remedies; (ii) the Contracting Member States of the UPC did not have the authority to agree the UPC Agreement without the requisite involvement of the European Union because the European Union has already exercised its competence for intellectual property matters, by of way, for example, the “Enforcement Directive” (2004/48/EC), “Brussels Regulation” ((EU) 1215/2012) and, in terms of substantive patent law, the “Biotech Directive” (98/44/EC) and two regulations on supplementary protection certificates (No. 469/2009 and no. 1610/96); (iii) in certain situations (including those involving the Central Division or where several defendants are jointly sued), the defendants may need to litigate in a foreign language, in different languages or in foreign countries. This would violate the principle of rule of law and the fundamental rights of a party to an effective defence; (iv) certain decisions by the European Patent Office, for example, the rejection of an application for a European patent, are only subject to review by the EPO. This does not qualify as a court or sufficient judicial review.
    •  
    • Selection and appointment of the judges and the rule of law: First, the complaint argues that the process for selecting and appointing the judges would be detrimental to judicial impartiality because a binding preselection of judges is made by the Advisory Committee. The members of the Advisory Committee are, inter alia, active members of the patent professions that allegedly include patent attorneys. The complaint states that this would result in inappropriate situations where patent attorneys would try cases before judges they have preselected. Second, the process for selecting and appointing the judges endangers judicial independency because the initial term of office is six years only and judges seeking reappointment may take career advancement into consideration when deciding cases.
    •  
    • No sufficient statutory basis for the Rules of Procedure in general and the limitation on the reimbursement of costs: The Rules of Procedure are adopted by the Administrative Committee and provide provisions on procedural aspects of the UPC which affect the parties’ fundamental rights. The complaint argues that a formal law which codifies the parameters of the Rules of Procedure is required. Neither the UPC Agreement nor the German ratification act provides such parameters. The same argument is advanced as regards the provisions of the Rules of Procedure which allow the Administrative Committee to set a cap on a party’s recoverable legal costs.