Unitary patent system – one year already

The unitary patent system came into operation on June 1, 2023. After one year, it can be considered a success.

Unitary patent

The European Patent Office has smoothly introduced this new title conferring uniform protection in 17 European countries.

To date, 28 179 European patents with unitary effect have been granted. This represents a conversion (uptake) rate of around 20%. In other words, one out of every five European patents granted is converted into a unitary patent, rather than being validated in the member states. (1)

Unitary patents are mainly used by European companies (64%).

On September 1, 2024, Romania will join the system, bringing the number of participating member states to 18.

The Unified Patent Court (UPC): pan-European jurisdiction

The UPC has its hands full. The new Court has exclusive jurisdiction – for participating states – over all European patents (unitary and validated – except opted-out) enabling Europe-wide disputes to be settled through a single procedure.

By its first anniversary, the Court had received 373 cases, including (2):

• 134 patent infringement actions, the majority before German Local Divisions,
• 165 counterclaims for invalidity
• 39 patent invalidity actions before the Central Division
• 32 actions for provisional and conservatory measures and injunctions.

The Luxembourg-based Court of Appeal has received around 85 cases.

The harmonizing effect of the UPC case law is crucial to establishing legal certainty and transparency within the new system, and offers users the predictability they need for their business activities.

(1) EPO UP Dashboard – https://www.epo.org/en/about-us/statistics/statistics-centre#/unitary-patent

(2) Case load UPC – https://www.unified-patent-court.org/sites/default/files/upc_documents/Case%20load%20of%20the%20Court_end%20May%202024_final.pdf

Philippe OCVIRK | European patent attorney | UPC Representative

L’entrée en vigueur du nouveau système du brevet européen est imminente. Il concerne toutes les entreprises. Venez découvrir les bases de ce nouveau système lors de notre événement :

Jeudi 23 mars – 8h30 à 10h30

Petit déjeuner / conférence

Cette fois est la bonne ! La ratification allemande courant février a déclenché le compte à rebours pour l’ouverture des portes de la Juridiction unifiée du brevet : le 1^er juin 2023.

Depuis le 1^er janvier, les demandeurs de brevets européens ont la possibilité de présenter une requête anticipée en effet unitaire auprès de l’Office Européen des Brevets.

La sunrise period a débuté le 1^er mars. Les propriétaires de brevets européens peuvent déposer une requête d’Opt-Out auprès du Greffe, afin de déroger à la compétence exclusive de la JUB.

Les décisions sont à prendre maintenant ! Qu’est-ce que le brevet unitaire ? Quelles implications et coûts ? Quel est le rôle de cette nouvelle juridiction supranationale spécialisée en brevets ? Quel est l’impact sur les brevets existants ? Quelles sont les dispositions transitoires ? Comment fonctionne l’opt-out ? Qui peut le déposer et quand ?

Ces différents aspects seront abordés lors de notre atelier par Philippe OCVIRK – European patent attorney.

Date : 23 mars 2023

Horaires.  8h30 : accueil ; 9h00-10h30 : présentation et questions

Lieu : The City by GINKGO 14-16 Avenue Pasteur L-2310 Luxembourg – Parking Glacis – Tram Limpertsberg/Theâtre

Inscription: office@freylinger.com

Lire les informations sur le brevet unitaire sur notre site :

The unitary patent system will start on 1 June 2023

Last Friday, 17 February 2023, the German Government ratified the Agreement on a Unified Patent Court.

This was the last step required to complete the ratification process of the unitary patent package.

It also triggers the countdown of Article 89 UPCA, whereby the Court will open its doors on 1st June 2023 and Unitary Patents will be available from same date.

We have updated our timeline accordingly

As our readers will know, this is a major change in the European patent landscape.

Decisions have to be taken taken now by patent owners, since early requests for unitary patent protection can be already lodged with the EPO. Furthermore, the German ratification triggers the sunrise period, during which patent proprietors can opt out their European patents from the exclusive competence of the new Court.

Please contact your usual Freylinger patent attorney for questions you may have on the UP and UPC. You may also refer to our news on this topic:

Unitary patents – an overview

Unitary patent transitory measures set to start on 1.01.2023

UPC and Opt-Out

UPC strategies – Considerations on the Opt-Out

On October 6th 2022, the Unified Patent Court Preparatory Team excitedly shared their implementation roadmap for the Unified Patent Court Agreement. The roadmap had initially planned the final ratification of the UPCA for the second half of December 2022, which would then define the date of entry into force of the UPCA to April 1st 2023 and the start of the Sunrise Period to January 1st 2023.

Unfortunately, in order to give enough time for users to prepare for the new system (and in particular in relation to the authentication keys required to access the Case Management System), the UPC has announced today that the start of the Sunrise Period will be delayed to March 1st 2023.

Accordingly, the date of entry into force of the UPCA and the date of application of the regulations regarding the Unitary Patent will be postponed to June 1st 2023.

The start date of the transitional measures regarding the Unitary Patent seems unchanged. From our understanding, it will thus be possible to file an early request for unitary effect and a request for a delay in issuing the decision to grant a European patent as of January 1st 2023.

Sources: Adjustment of the timeline – Start of the Sunrise Period on 1 March 2023
https://www.epo.org/applying/european/unitary/unitary-patent/transitional-arrangements-for-early-uptake.html

Office Freylinger vous propose un webinaire consacré au système du brevet unitaire européen qui entrera en vigueur au printemps 2023. Il s’agit d’une révolution dans le monde des brevets en Europe.

Le webinaire se tiendra le vendredi 16 décembre de 11h00 à 12h00.

Philippe Ocvirk, European Patent Attorney, présentera ce nouveau système qui est attendu depuis plus de 50 ans et repose sur deux piliers :

• le brevet européen à effet unitaire (brevet unitaire) – une protection facultative, qui peut être obtenue à la délivrance d’un brevet européen.
• la création d’une juridiction européenne spécialisée en matière de brevets : la Juridiction unifiée du brevet (JUB).

Le webinaire propose une introduction à ce nouveau système. L’Office européen des brevets a annoncé des mesures transitoires qui permettent d’opter dès le 1er janvier 2023 pour un brevet unitaire à la délivrance du brevet européen. La nouvelle juridiction aura compétence pour tous les brevets européens, unitaires ou classiques, y compris ceux déjà délivrés.

Tous les propriétaires de brevets européens sont donc concernés par le nouveau système.

Inscription gratuite en remplissant ce formulaire :

https://forms.gle/fzCxyKGgR1GHJEMh8

The present article presents some considerations on the possibility of opting out patents from the exclusive competence of the Unified Patent Court.

Staying in to benefit from the UPC system

The UPC will include:

• Judicial judges experimented in patent matters
• Technical Judges that are likely to have a better understanding of technically complex inventions and a better reasoning on patent infringement.

The new Court will obviously prevent situations of contradictory decisions that may occur when litigating the same case before different national Courts.

The Rules of Proceeding of the UPC are designed to reach decisions within one year, if the defined schedule is respected, thus substantially reducing the duration of proceedings compared to some national Courts.

The UPC is particularly powerful in case of multiple infringements in different European countries, since a decision can be obtained through a single action brought before the UPC and will have effect over all UPC-A member states. Choosing the UPC will, then, significantly reduce the litigation costs in comparison with several litigations to be carried out in different countries.

Reasons to opt out

With the UPC, a European patent can be revoked in all states by a single decision. This will allow third parties and suspected infringers to efficiently challenge the validity, during the whole lifetime of the patents.
Hence European patents obtained before the UPC opening and for which the opposition period has expired will remain at risk of central revocation.

Moreover, the lack of experience and case law from the UPC may make choosing the UPC risky as we do not know yet the position that will be taken by the Court, in particular regarding the validity of patents. Also, UPC rules and procedures are obviously untried; it will take several years to achieve consistency in decisions.

Another element to consider where making the choice to opt out patents is that opt-out must be made by all proprietors and in respect of all of the states for which the European patent has been granted, not only EU member states. The first difficulty that may arise from this rule is to identify the true proprietors of the patent, which will not necessarily be the registered proprietors, especially when patents have been assigned from a third party. Ownership should be checked, although there is no necessity to update/correct registers. The second difficulty is the necessity for all the proprietors to join the opt-out request. As such, it is likely that when litigation arise, the opt out itself may be subject to discussion.

A proprietor having registered an opt-out and wishing to bring an action before the UPC to benefit from its pan-European jurisdiction may opt in again, by withdrawing the opt-out. However, the proprietor may be impeded from opting back in where an action has already been brought before a national Court; the patent is thus locked out of the UPC forever.

Philippe OCVIRK, Partner | European patent attorney

UPC and Opt-Out

The Unified Patent Court (UPC) will open its doors in spring 2023. The date of 01.04.2023 has been announced by the Preparatory Committee . Its jurisdiction will extend over all European patents in the territories of EU member states having ratified the Agreement on a Unified Patent Court (UPC-A).
Antagonistically, while the UPC-A creates the long-awaited European patent Court, it also comprises provisions to derogate from its competence, known as ‘opt-out’.

Jurisdiction of the UPC

According to Art. 3 of the Agreement on a Unified Patent Court (UPC-A) the future UPC will have jurisdiction not only over European patents with unitary effect, but also over traditional European patents (‘validated’ patents) and pending applications, and over SPCs, even if these are granted before its entry into force.

During a ‘transitional‘ period however, the national Courts will remain competent to hear cases relating to validated European patents.

Opt-out definition

Opting-out is the option open to patentees and applicants to exclude disputes related to any of their validated European patents (in force or expired) or pending applications from the UPC’s jurisdiction. Any action for infringement or for revocation of an Opted-out European patent may only be heard by the competent national Courts, as is currently the case.
An opt-out has effect in all Member States and for the entire lifetime of the patent.

The UPC Preparatory Committee has decided that there will be no official fee for filing a request for an opt-out. There will however be costs associated with the handling of the opt-out procedure through your patent attorney firm.

For the avoidance of doubt, European patents with unitary effect cannot be opted out.

When to opt out

The registration of opt-outs will only be possible during the limited ‘transitional’ period (7 years, prolongable by 7 years). Practically, opt-out’s can be notified to the UPC Registry by the latest one month before expiry of the transitional period .
It should be noted that opting out will be possible during a ‘sunrise’ period spanning the three months preceding the opening of the UPC. The sunrise period is expected to start on 01.01.2023.

Important note: An Application to opt out a given patent cannot be registered if an action relating to said patent has already been brought before the UPC .

How to opt out

An application to opt out must be lodged with the UPC Registry.
Opt-outs are to be registered on a right per right basis and in the name of each and all proprietors or applicants.
The registers need not be updated, but in case of discrepancy a declaration must be filed alongside, stating that the requesters are entitled to be registered in the national patent registers.

The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.

The opt-out is only effective from the date of entry into the Register.

Withdrawal of the opt-out

An opt-out can be withdrawn at any moment, provided no action has been brought before a national Court .
This opt-in will then be definitive: the patent proprietor will not be able to opt out its European patent again .

If an opt-out application was registered for a pending European patent application, said opt-out will be automatically deemed withdrawn should the patentee decides to request unitary effect (obtain a unitary patent).

Philippe OCVIRK, Partner | European patent attorney

The European patent office (EPO) announced earlier this week the starting date of its transitional measures relating to unitary patent protection.

As of 1 January 2023, patent applicants will be able to:

• file early requests for unitary effect; and
• file requests for a delay in issuing the decision to grant a European patent.

These two measures – announced in December 2021 – were introduced to support an early uptake of the Unitary Patent by the users. Cautiously, the EPO initially considered that these measures would only apply after Germany would have effectively ratified.

With this announcement the EPO hence anticipates the German ratification, following the lead of the Unified Patent Court, who declared that it will open its doors on 1^st April 2023 (see implementation roadmap)

The transitory measures are applicable until the entry into operation of the Unitary Patent Protection system.

Philippe OCVIRK, Partner & European patent attorney

The unitary patent package is expected to go live in spring 2023. It is based on two pillars:

• a new unitary patent right known as the European patent with unitary effect (in short ‘Unitary Patent’), which is created by EU instruments; and
• a new court, the Unified patent court (UPC), which is competent for all European patents. 

Office Freylinger will regularly inform their clients and associates about this new system.

Click this link to read our notice on the Unitary Patent.

It is important for patent applicants and owners to get acquainted with the pros and cons of the new system.

Please contact your usual Freylinger attorney for any information on the UP system or to discuss your IP strategy.

Philippe Ocvirk

UPC ahead!

Following Austria’s ratification with the General Secretariat of the Council of the European Union, the  Protocol on Provisional Application of the UPC Agreement has entered into force today, 19 January 2022.

As announced by the UPC Preparatory Committe (here):

This event marks the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organisation.

More information coming soon.

Philippe OCVIRK

The German Federal Government deposited on 27 September Germany’s instrument of ratification of the Protocol on the Provisional Application (PPA) of the Unified Patent Court Agreement (UPCA).

This is a decisive step on the way to the establishment of the Unitary Patent package, which consists of the new European unitary patent (granted by the EPO) and the setting up of the Unified Patent Court.

The provisional application is required to establish the legal capacity and organizational capability of the UPC. During the PAP phase, the governing bodies of the Court will be assembled, budget and IT systems as well as finalization of the recruitment of the judges of the Court. The Preparatory Committee foresees that approximately eight months will be required to conclude all the work that needs to be done during the PAP.

Germany’s ratification of the PPA comes after several years of doubt, during the examination of the Agreement by the German Federal Constitutional Court (FCC). Following the decision of the FCC published in July this year the German law for the ratification of the UPCA and its Protocols was signed by the President and published in August allowing Germany now to proceed with ratification.

Germany’s ratification enables the PPA to come into force (and therefore the provisional application period to start) as soon as two more countries ratify the PPA or otherwise consent to be bound by the provisional application of certain UPCA provisions.

One of those countries is very likely to be Slovenia (which is hosting in Ljubljana one of the seats of the UPC Mediation and Arbitration Centre). Slovenia’s legislation ratifying the PPA came into force on 24 September 2021 when it was published in Slovenia’s Official Gazette although the Council of the EU has not yet recorded the deposit of the instrument of ratification.

Austria is also expected to ratify the PPA shortly.

Further signs of activity on this topic:

–       An overview of the state of play for entry into effect of the unitary patent package was due to be addressed during the Competitiveness council on 29 September 2021;

–       The Select Committee (dealing with the Unitary  patent) of the EPO Administrative Council will meet on 14 October 2021.

Alexander Ramsay, Chair of the UPC, estimates that the UPC will start operations around mid-2022.

Philippe Ocvirk

Today at the EU’s Competitiveness Council meeting in Brussels, the UK announced that it is proceeding with preparations to ratify the Unified Patent Court Agreement.
This puts an end to the uncertainty period that started with the Brexit vote back in June this year.

The Unified Patent Court will be competent for classic European patents and have exclusive jurisdiction for the new European patent with unitary effect (Unitary Patent).
The Unitary Patent is an EU wide patent that can be requested at the grant stage of the conventional European patent. The Unitary Patent Court will permit EU-wide enforcement of European patents, making them more valuable.

Ratification by 13 countries is required for the new system to start, including France, Germany and the United-Kingdom. Today, 11 countries have ratified (AT, BE, BG, DK, FI, FR, LU, MT, NL, PT, SE), and 4 are ready to ratify – including the UK. Germany is reportedly ready for ratification.

With this good news, entry into force of the Unitary Patent system may again be expected in 2017.

Philippe Ocvirk