The Unified Patent Court (UPC) and the unitary patent are major developments in the world of industrial property which came into force on June 1, 2023. The so-called "sunrise" period, during which it was possible to apply for a unitary effect for a European patent or file opt-outs, ran from March 1, 2023, to May 31, 2023. The European Patent Office (EPO) had also already implemented transitional measures to guarantee unitary effect from the start of the new jurisdiction.
Find answers to all your questions about the UPC, the unitary patent and the opt-out on this specific page. If you need further guidance on European patent portfolio management strategy, our experts are at your disposal.
- Which countries are covered by the European patent with unitary effect?
- What are the procedures and deadlines for requesting unitary effect for your patents?
- What is the cost of requesting unitary effect?
- How much does the unitary patent cost?
- In which language should the request for unitary effect be submitted?
- Is it possible to opt out of unitary effect patents in specific countries?
- Before which jurisdiction will unitary patents be litigated?
Unified Patent Court
- What is the UPC?
The Unified Patent Court (UPC) is a new international jurisdiction created to adjudicate disputes involving European patents or supplementary protection certificates (SPCs) under the Agreement on a Unified Patent Court (UPCA), including disputes relating to validity and infringement.
The UPC's jurisdiction is limited to the European Union states that have signed and ratified the UPCA (Group A):
| Austria (AT) | Finland (FI) | Lithuania (LT) | Romania (RO) |
| Belgium (BE) | France (FR) | Luxembourg (LU) | Slovenia (SI) |
| Bulgaria (BG) | Germany (DE) | Malta (MT) | Sweden (SE) |
| Denmark (DK) | Italy (IT) | Netherlands (NL) | |
| Estonia (EE) | Latvia (LV) | Portugal (PT) |
As the other EU states ratify the UPCA, with the exception of non-signatory Spain (ES), Croatia (HR) and Poland (PL) (Group C), the UPC's jurisdiction will also extend to the following states (Group B):
| Cyprus (CY) | Hungary (HU) | Czech Republic (CZ) |
| Greece (GR) | Ireland (IE) | Slovakia (SK) |
- What will be the jurisdiction for disputes concerning "classic" European patents?
For a transitional period of seven years, renewable, if necessary, from the UPC's entry into force on June 1, 2023, legal actions relating to European patents which do not have unitary effect ("classic" European patents) may be brought either before the UPC or before national courts. The transitional period may be extended by up to seven years by the Administrative Committee of the UPC.
Patent holders will therefore have a choice when it comes to taking legal action during the transitional period. The strategy of the court seized can be decided on a case-by-case basis. However, a similar choice is offered to third parties who have a legal interest, for example in a nullity action or an action for a declaration of non-infringement.
The opt-out offers owners of published patents and patent applications the possibility of restricting the options available to their competitors by derogating from the exclusive jurisdiction of the UPC.
European patent with unitary effect
- Which countries are covered by the European patent with unitary effect?
EU Regulations 1257/2012 and 1260/2012 have created a new system whereby an European patent granted by the EPO can have a unitary effect in EU states participating in enhanced cooperation.
Currently, 25 Member States participate in enhanced cooperation, i.e., all EU states except Spain, Croatia an Poland.
However, the unitary effect extends only to those participating states which have also completed ratification of the Agreement on a Unified Patent Court (UPCA). This currently covers the following 18 states:
| Austria (AT) | Finland (FI) | Lithuania (LT) | Romania (RO) |
| Belgium (BE) | France (FR) | Luxembourg (LU) | Slovenia (SI) |
| Bulgaria (BG) | Germany (DE) | Malta (MT) | Sweden (SE) |
| Denmark (DK) | Italy (IT) | Netherlands (NL) | |
| Estonia (EE) | Latvia (LV) | Portugal (PT) |
Registration of a unitary effect is optional. It must be requested by patent owners.
If a unitary effect is registered, none of these states can be the subject of a national validation. If you are also interested in other states, you will need to cover them with separate national validations.
- What are the procedures and deadlines for requesting unitary effect for your patents?
The unitary effect is registered by the European Patent Office following a request which must be submitted no later than one month after publication of the mention of grant of the patent in question.
- What is the cost of requesting unitary effect?
The European Patent Office (EPO) does not charge a fee for requesting unitary effect.
- How much does the unitary patent cost?
The annual fees, for the year 2023, for a unitary patent are as follows:
| Year 11 | 1 460 € | ||
| Year 2 | 35 € | Year 12 | 1 775 € |
| Year 3 | 105 € | Year 13 | 2 105 € |
| Year 4 | 145 € | Year 14 | 2 455 € |
| Year 5 | 315 € | Year 15 | 2 830 € |
| Year 6 | 475 € | Year 16 | 3 240 € |
| Year 7 | 630 € | Year 17 | 3 640 € |
| Year 8 | 815 € | Year 18 | 4 055 € |
| Year 9 | 990 € | Year 19 | 4 455 € |
| Year 10 | 1 175 € | Year 20 | 4 855 € |
If you are a Plasseraud IP customer, please do not hesitate to contact your patent attorney to request access to our unitary patent & "classic" European patent cost comparator.
- In which language should the request for unitary effect be submitted?
The language of the request for unitary effect is the same as the one of the European patent application. The request must be accompanied by a translation of the patent description in a language defined as follows:
| Language of the European patent application | Language of the translation of the patent to be attached to the request for unitary effect |
| French | English translation of the patent description. |
| German | English translation of the patent description. |
| English | Translation of the patent description into an EU language other than English, e.g., a translation required for a non-unitary state in which you wish the patent to be validated, or a translation into Spanish or Portuguese that would have been made to file a corresponding application in a Latin American country. |
- Is it possible to opt out of unitary effect patents in specific countries?
The European patent with unitary effect will continue to produce its effects if annual fees are paid to the EPO.
It is not possible to cease to maintain the European patent with unitary effect for only some of the States. A decision to discontinue before the end of the term applies to all States concerned by the unitary effect.
- Before which jurisdiction will unitary patents be litigated?
Legal proceedings relating to a European patent with unitary effect, in particular as regards its infringement or validity, fall within the exclusive jurisdiction of the Unified Patent Jurisdiction.
Opt-outs are not possible for a European patent with unitary effect.
Opt-out
- Opt-out: what is it?
The opt-out is an option offered to holders of European patents and patent applications to avoid the exclusive jurisdiction of the UPC for disputes relating to classic European patents, without unitary effect.
- How do I opt-out?
The opt-out is made by filing a declaration of exemption with the Registry of the Unified Patent Court.
The UPC Registry allows grouped opt-outs for an entire portfolio, provided that each title is identified.
If the classic European patent gives rise to a Supplementary Protection Certificate (SPC), the opt-out for the patent extends to the SPC.
If an opt-out has been declared for a given patent or SPC and no action has been brought before a national court, the owner may withdraw the opt-out to restore the exclusive jurisdiction of the UPC if he so wishes. Any withdrawal of an opt-out is irrevocable, i.e., it is no longer possible to carry out a new opt-out ("lock-in").
The opt-out will remain in effect after the end of the transitional period unless a withdrawal is filed with the Registrar.
An opt-out is not possible in the case of a European patent for which a unitary effect has been registered by the EPO.
- Is it possible to declare an opt-out for specific UPCA member states?
There is no possibility of declaring the opt-out for only some of the UPCA member states designated in the patent or application.
- When should an opt-out be filed?
The opt-out declaration can be sent to the UPC registry as soon as the patent application has been published, and at any time up to one month before the end of the transitional period. However, the opt-out is not valid if an action has already been brought before the UPC.
Please note: to effectively prevent third parties from initiating invalidity proceedings before the UPC, it is safer to declare the opt-out before the date of publication of the patent grant.
- How much does an opt-out cost?
There is no official opt-out fee.
The cost associated with the opt-out for a patent only includes our fees for verifying the opt-out data and submitting the opt-out declaration to the UPC Registrar.
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