What is the Unified Patent Court?
The Unified Patent Court (UPC) was established as a central authority that hears patent validity and infringement cases from several European countries. Only certain types of patents in countries that have signed the Unified Patent Court Agreement (UPCA) can be litigated in this court.
Understanding what the UPC does and how it works will help you get the best and most cost-effective protection for an invention in Europe.
What does the UPC do?
The UPC has jurisdiction to hear patent litigation cases for:
Unitary Patents (UPs) and
“Traditional” European patents that have been validated in UPCA member countries (listed below).
To learn more about the difference between Unitary Patents and traditional European patents, see our earlier article here.
Countries where the UPCA is currently force are:
Austria
Belgium
Bulgaria
Denmark
Estonia
Finland
France
Germany
Italy
Latvia
Lithuania
Luxembourg
Malta
Netherlands
Portugal
Slovenia
Sweden
Any cases to do with patents in countries that are not signatories to the UPCA can’t be heard by the UPC. This includes traditional European patents validated in non-UPCA countries. It also includes European patents which have been validated in UPCA countries, but have been opted-out (more on this below).
Patents granted by individual national authorities can’t be litigated in the UPC.
Why was the UPC created?
The UPC was established after the UPCA was signed in 2013. It started hearing cases on 1st June 2023. This new court was designed to make the enforcement of patents in Europe more cost-effective and straightforward.
Unitary Patents give holders rights over their inventions across all UPCA member countries. Similarly, the UPC means litigation cases can be brought in all these countries at once without applying to several different national courts. So if patent infringement occurs across several UPCA countries, the patentee can seek an injunction in all countries at once.
Currently, the UPC is in a “young” court and has only received around 411 cases.
Can you opt out of the UPC?
All Unitary Patents also have to have their cases heard at the UPC. There is no way to opt a Unitary Patent out of the jurisdiction of the UPC.
All European Patents validated in individual UPCA signatory countries are automatically ‘opted in’ to the UPC. So if you want to litigate a European Patent in a country that’s a UPCA signatory, you will have to do so through the UPC, unless you opt out. This means that any litigation will take place in the national courts.
It is possible for conventional European Patents to be opted out of the UPC as long as there’s no litigation underway. This will be the case for the whole UPC transitional period, which will end on 1 June 2030 at the earliest.
The opt-out will last for the patent’s lifetime, including beyond the end of the transitional period. If a patentee changes their mind, an opt-out can be withdrawn, but this can only be done once. The only cost of opting a patent out of the UPC is any administration fees incurred by attorneys dealing with the process.
It’s also important to note that all countries covered by a single European patent have to opt-out together.
Should you use the UPC or not?
In the case of Unitary Patents, patentees will have no choice but to litigate through the UPC. For traditional European patents that have been validated in UPC states, the default position is that the UPC must be used.
However, patentees might consider selecting ‘opt-out’ for their traditional European Patent. Before they do so, they should consider that the UPC allows them to enforce their rights across multiple UPCA countries through a single, straightforward process. This means they won’t incur the extra expense and complication of two or more parallel national patent litigations.
It’s also worth considering the robustness of a patent when making this decision. While it’s difficult and expensive to attack a European Patent via the national courts, the UPC gives a central place for infringers to seek revocation across multiple countries. So if a patent is vulnerable, this could be a problem, particularly as the quality of UPC decisions is relatively unknown.
If you’re unsure whether to opt your patent in or out of the UPC, the Grey Wolf IP team can give you expert advice. With years of experience filing and enforcing European Patents, we can listen to your needs and make sure you get the right protection for your invention.