The Unitary Patent

With a Unitary Patent the patent proprietor gains “unitary effect” across the 17 UPC members states through only one application process. The Unitary Patent is granted by the EPO under the rules and procedures following the EPC.

The application process for a Unitary Patent is identical to the current process of application for a European Patent with the EPO. One month after the grant of the patent at the latest, the proprietor must decide whether to apply for unitary effect of the patent.

The Unitary Patent removes the need for national validation procedures which could save inventors considerable time and costs when obtaining patent protection. Thus, the Unitary Patent reminds of the access to register a European Trademark.  

UPC COMPETENCE AND JURISDICTION

The UPC allows proprietors of Unitary Patents, European Patents which have not been opted-out, and SPCs (based on one of the two) to enforce their rights. The UPC’s competence includes amongst others infringement, revocation, preliminary injunctions, compensation, damages, and non-infringement proceedings. The UPC has exclusive jurisdiction in this regard in the countries that are party and have ratified the agreement. 

For European Patents which have been opted-out the national courts will continue to hold jurisdiction, however this is only the case in the transitional period, which runs 7 years after the date of entry into force of the UPC Agreement. The transitional period can be extended by another 7 years.

Additionally, it is worth noting that oppositions, and potential opposition proceedings, at the EPO will still be possible.

Where to bring an action

Infringement actions can be filed in local or regional divisions in the UPC member state where the defendant has its principal place of business or where the infringement has occurred or may occur. If the member state does not have a local or regional division, or if the infringement has occurred in 3 or more UPC member states, which have local or regional divisions, the case will proceed before the central division.

Non-infringement actions or invalidity actions must be brought before the central division unless an infringement action regarding the patent-in-suit is ongoing in a local or a regional division.

This system means that in many cases the plaintiff will have multiple forum choices. Even though the system in theory should be “unitary”, there will undoubtedly be differences from one UPC court to another and strategical considerations must be made when choosing between different the courts.

The UPC process

The procedural stages before the UPC will contain the following steps: 

• a written procedure where the parties state their claims,

• an interim procedure where the judge-rapporteur identifies the main issues and determine relevant facts in the dispute and plan the further process of the proceedings,

• an oral procedure and an oral hearing after which the Court will rule its decision,

• a procedure for the determination of damages and compensation initiates, and

• lastly, a procedure regarding costs. 

On this basis, the UPC will make its decision.

It is worth noting that according to the UPC Rules of Procedure, 1st instance decisions should be delivered within 12 months of the case being filed in all types of proceedings, which will inevitably lead to very short deadlines for the parties.

Revocation in UPC System

The UPC will hear both cases regarding revocation of patents and counterclaims for revocation. The main applicable law in revocation proceedings will be the European Patent Convention. It remains to be seen to what extend the UPC, at least in its first years, will rely on the case law of the CJEU, the EPO, and the national courts, but the extensive case law of the EPO on (in)validity through the opposition procedure will most likely have a role to play.

The revocation process of the UPC will include some of the same elements as the opposition procedure of the EPO. However, with some notable exceptions, such as the removal of the 9-month time-limit and no option of filing an opposition/revocation anonymously.

Infringement in the UPC System

The UPC Agreement includes a number of provisions regulating infringement (both direct and indirect) and limitations of/exemptions to patent protection, such as exhaustion. The provisions are largely similar to the infringement provisions in most EU Member States’ patent systems. However, it is important to note that some rules may have been added or removed in comparison with the national regulations.

In contrast the fundamental questions of claim construction and scope of protection will still be regulated by article 69 of the EPC and the protocol to article 69 of the EPC. At the national courts the vagueness of article 69 and the protocol has led to a number of differing legal practices in the European patent systems, such as the UK’s practice on protection of equivalents. However, in recent years the field has become increasingly harmonized, which may help the UPC find common ground on this central issue.