FAQ
Table of contents
The basics
1. What is the European Patent Office (EPO)?The European Patent Office (EPO) is the main part of the European Patent Organization (EPOrg), created by the European Patent Convention, to accept and examine patent applications on behalf of member states and issue European Patents. The EPO essentially acts as a “one-stop-shop” and provides central examination and grant proceedings for European patent applications. The EPO is not an agency of the European Union (EU) because it was created by a separate treaty and has both EU and non-EU member states.
2. What is a European Patent?
A European Patent is a document granted after examination by the European Patent Office. For validation, the patent holder can then choose one of the following options: (1) the granted European patent can be validated, maintained, and enforced as individual national patents in one or more of the (currently 39) European Patent Convention contracting states (classical way);(2) since 1 June 2023, a European patent can be validated as a single “unitary patent” for a group of (currently 18) “participating states” of the European Union; or (3) a combination of (1) and (2) to cover a combination of the (currently 18) participating states of the unitary patent system and one or more EPC contracting states that are not (yet) participating states of the unitary paten system (see also FAQ 10 below).
3. Are there alternatives to European Patents?
Yes. A national patent can be obtained in Europe the traditional way by filing and prosecuting national patent applications in national patent offices. The resulting patent can be enforced in national courts.
In addition to patent protection, technical inventions can also be protected in some countries by a utility model. For example, a German utility model provides low-cost protection for inventions excluding methods (however, computer programs can be protected with utility models). A German utility model provides a number of advantages that ought to be taken into account when considering a strategic intellectual property rights portfolio. As it is registered without examination, it is available quickly and at low cost (as a general rule, registration takes place within a few weeks from filing the application). Additionally, the relevant prior art is limited compared to patent applications, and a grace period (of six months) may protect subject matter made public prior to the filing date, which is not available for patent protection in Germany. Furthermore, the possibility of branching off of a utility model from a pending German patent application (or European patent application with Germany designated) allows flanking protection for pending patent applications and tailoring claims to infringing products. Notwithstanding these benefits, the German utility model is an unexamined intellectual property right of ten years’ duration, which does not provide protection for methods.
The EU patent package
4. What is the EU patent package?
The (EU) patent package consists of two EU regulations (laws) and the Unified Patent Court Agreement (UPCA), all of which took effect on 1 June 2023:
- EU Regulation 1257/12 created a single “European Patent with unitary effect,” commonly called a “Unitary Patent,” for the EU member states that have ratified the UPCA (see FAQs 6-26 below);
- EU Regulation 1260/12 provides the translation arrangements for Unitary Patents (see FAQ 27-29 below); and
- The UPCA, EU Document 16351/12 of Jan. 11, 2013, is a treaty among some EU states that created a single multinational civil court, the Unified Patent Court, for litigation in the participating states of both “classical” European Patents and those having unitary effect (see FAQs 30-32 below).
5. What is the connection that makes the Unitary Patent and UPC a package?
The Unitary Patent regulations provide that they are applicable to states that have ratified the UPCA. A Unitary Patent can only be enforced in the UPC, not in national courts.
6. Is this package effective throughout the EU?
No. The package is effective only for the participating states that have ratified the UPCA. Spain did not support the package, primarily because translation into their national language would not be required, and Poland has taken a wait-and-see attitude. Therefore, the package was adopted on the basis of “enhanced cooperation,” a provision of EU treaties that permits a majority of EU states to proceed by agreement when unanimity cannot be attained.
When the package took effect on 1 June 2023, the following 17 states had ratified the UPCA: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. Romania became the 18th participant on 1 September 2024. The following six EU states have signed the UPCA and may participate after they ratify that agreement: Cyprus, Czechia, Greece, Hungary, Ireland and Slovakia. The United Kingdom, having left the EU, does not participate in the package.
7. Could an EU member state that does not initially sign and ratify the UPC agreement join in later?
Yes. That possibility will remain open to all EU member states, including those that do not initially sign or ratify, and any new EU members.
8. Can non-EU members of the EPO, such as Norway, Switzerland, Turkey, and the UK participate in the Unitary Patent and UPC?
No, not under the present arrangements. The Unitary Patent right was created by European Union regulations and is only for EU states. Also, UPCA Article 2(b) defines “Member State” as “a Member State of the European Union.”
While the Court of Justice of the European Union (CJEU) indicated in Opinion No. 1/09 in 2011 that a new patent court for less than all EU members would be permissible in principle, it also ruled that participation in a patent court by non-EU states would be inconsistent with EU treaties if that court’s decisions were not subject to CJEU review on issues concerning the interpretation and application of EU law.
Although there was some consideration of ways to permit the UK to participate in the UP-UPC system following Brexit, a UK government spokesperson announced on 27 February 2020, that “the UK will not be seeking involvement in the UP/UPC system.”
9. When did the EU patent package take effect?
1 June 2023.
10. What is the Unitary Patent?
“Unitary Patent” is the short name for a “European patent with unitary effect.” It is a European Patent granted by the EPO under the rules and procedures of the EPC for which the patent applicant requests unitary effect in the territory of all EU member states participating in the Unitary Patent system at the time of grant of the European Patent. The Unitary Patent co-exists with traditional national patents and with “classical” European Patents. As of 6 October 2024, over 36% of EU applicants validated their European patent as a Unitary Patent. (Statistics can be found on the EPO’s Unitary Patent Dashboard here.)
Patent applicants can choose to validate European Patents in combinations of “classical” European Patents and Unitary Patents. For example:
- A Unitary Patent for all EU member states that participate in the Unitary Patent system at the time of European Patent grant, plus — if the applicant wishes — “classical” validation of a European Patent in any combination of EU member states that are not participating in the Unitary Patent system at that time and non-EU states participating in the EPO, which cannot participate in the Unitary Patent system; or
- Only a European Patent, classically validated as a national patent in one or more of the EPC contracting states selected by the applicant.
11. What is the European Patent Regulation?
It is European Union regulation No. 1257/12 of Dec. 17, 2017, which permits the EPO to issue a single, “unitary European Patent with unitary effect” (Unitary Patent) for participating EU states, and which must also participate in the UPC. It also stipulates which administrative tasks are entrusted to the EPO (see FAQ 12).
12. What is the EPO’s role in Unitary Patents?
Up to grant of a European Patent, the EPO has the same role of examining European Patent applications that it has always had (it remains the “one-stop-shop” for central examination and grant proceedings). European Patent applicants can choose within one month of the grant of a European Patent whether to validate it as an EU Unitary Patent for EU states that have ratified the UPCA. That is a shorter period of time from grant than the three months within which applicants can select validation as one or more national patents.
If validation as a Unitary Patent is selected, the same European Patent can also be validated as a national patent in any of the EPO states not participating in the Unitary Patent system. However, one cannot obtain both a Unitary Patent and a conventional patent based on the same European Patent for Unitary Patent participating states.
If an applicant elects validation as a Unitary Patent, the EPO will undertake the post-grant tasks that would be performed by national patent offices in connection with “classical” European Patents and national patents. In particular, the Unitary Patent regulation provides that the participating member states entrust the following tasks to the EPO, to be carried out by the EPO on the basis of the internal rules of the EPO:
- Receiving and examining requests for unitary effect
- Registering unitary effect
- Publishing any required translations during the transitional period
- Setting up and maintaining a new “Register for Unitary Patent protection,” containing entries on assignment, transfer, lapse, licensing, limitation or revocation of Unitary Patents
- Collecting annual maintenance fees for Unitary Patents
- Distributing part of the annual fees to the participating member states
- Administering a compensation scheme for reimbursement of translation costs (up to a ceiling) for certain applicants filing applications in an official language of the EU other than the official EPO languages (English, French, and German)
13. How does the Unitary Patent validation procedure compare to national validations?
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Unitary Patent |
National Patents |
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All matters handled by the EPO |
Each national patent office handles its national patent validations |
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No validation fee |
National validation fees |
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Validation required within one month of grant |
Validation required within three months of grant |
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One full translation is required but will not be examined. If a high-quality translation is needed for litigation in the UPC, it can be obtained when needed. |
Some states (e.g., Italy) require a full translation for their national patents, which very probably will be used in the case of any litigation |
|
All post-validation matters are handled by the EPO |
All post-validation matters are handled by the national patent offices |
14. When should I make validation decisions?
A request for validation as a Unitary Patent is required within one month from grant of a European Patent. Because that is a short time, it is a good idea to start deciding whether to validate the EP as a Unitary Patent or as one or more national patents when you receive the EPO’s notice of intent to grant the European Patent (called a “Communication under Rule 71(3)”), which typically occurs four months before grant. If you encounter delays in the validation decisions, your professional representative probably can delay the grant of the European Patent, thereby delaying the validation deadlines.
15. What if the Unitary Patent validation is denied?
The denial of Unitary Patent validation is based on procedural grounds and is very unlikely if the request is filed with a translation within one month of grant. There is a procedure for appeal of Unitary Patent validation requests to the UPC. Alternatively, the applicant can seek validation of national patents within three months of grant. Most participating states also have safety net laws that permit validation as national patents when the EPO or UPC has refused validation of a European Patent. See here.
16. How is the EPO handling of Unitary Patent matters implemented?
The EU member states participating in the Unitary Patent system set up a “Select Committee” of the Administrative Council of the European Patent Organization (EPOrg, the umbrella organization that includes the EPO) to adopt the necessary legal and financial framework. The EPO created a Unitary Patent Division to implement the tasks assigned to the EPO. The Unitary Patent implementing rules are based on the existing rules and procedures under the European Patent Convention.
17. How do I file an application for a Unitary Patent?
File a conventional application for a European Patent. No separate or different application is required. The applicant can decide whether to obtain a Unitary Patent at the time of grant of a European Patent.
18. What is the effect on applications filed with the EPO before the Unitary Patent regulation became effective in a particular state
For technical reasons in the Unitary Patent regulation, all states for which a Unitary Patent is validated must have been members of both the EU and the EPO at the time the application was filed. Because Malta joined the EPO on 1 March 2007, no UPs can be validated if they are based on applications filed before that date. Croatia joined the EPO 1 January 2008 and has recently joined the EU. It has not yet signed the UPCA. But after Croatia signs and ratifies the UPCA, no patent applications filed before 2008 will qualify for unitary protection.
19. Can I add EU countries to my Unitary Patent if they ratify after my patent is granted?
No. Validation as a Unitary Patent will be available only within one month from the date of European Patent grant and only for the participating EU states at that time. Protection in other EU countries and non-EU members of the EPO can only be obtained by national patent validation within three months after the European Patent grant or by separate national patent applications. Once a Unitary Patent is registered, its territorial scope remains fixed for the lifetime of the patent to the EU member states that have signed and ratified the UPCA at the time of registration.
20. Why does the Unitary Patent only include some EU states?
EU treaties normally require unanimity for the EU to adopt an EU patent law but permit a group of member states to create a single patent by agreement (treaty) under a procedure called “enhanced cooperation.” Spain and Italy initially did not agree to the EU-wide patent granting and enforcement proposals, primarily because the proposals did not require translations into their languages, primarily for internal political reasons. Because unanimity could not be achieved, the other 25 EU member states at that time proceeded without them. (Italy later decided to participate, and the UK has left the EU and decided not to seek participation).
21. Will the Unitary Patent be effective outside the EU?
No. There was an earlier proposal for a Unitary Patent and a patent court for all states of the EU and other interested contracting states of the EPO. That proposal was rejected by the Court of Justice of the European Union (CJEU) as inconsistent with the EU treaties. As a result, the current package is limited to EU member states.
22. How do the Unitary Patent costs compare to national patents?
The four principal patent cost components are prosecution, validation, translation, and renewal fees. Because the Unitary Patent is a European Patent (EP), the prosecution costs are the same as a “classical” European Patent. The EPO does not charge any fee for validation as a Unitary Patent. A translation into one other language of the EPO is required. (See FAQs 27-29.)
The level of renewal fees is a major factor in deciding whether to validate a European Patent as a Unitary Patent or as national patents. The Unitary Patent renewal fee schedule (here) provides fee levels corresponding to the equivalent of the sum of renewal fees that would be paid for France, Germany, the Netherlands, and the UK. Although the UK has withdrawn, the EPO appears unlikely to change that fee schedule.
23. Can I validate a Unitary Patent for only a few countries to save costs?
No. If validation as a Unitary Patent is elected at the time of grant of a European Patent, it will be for all EU states that have ratified at that time.
24. Will I have to pay annual maintenance fees to each of the participating member states to keep my Unitary Patent in force?
No. There only will be a single EU annuity for a Unitary Patent paid to the EPO.
25. What are the amounts of the annual maintenance fees?
The Unitary Patent renewal fee schedule here provides fee levels corresponding to the sum of the renewal fees that would be paid for France, Germany, the Netherlands, and the UK. Although the UK has withdrawn, the EPO appears unlikely to change that fee schedule.
26. Will I be able to cancel Unitary Patent coverage in some states to reduce annual maintenance fees?
No, because the Unitary Patent is unitary. The practice of discontinuing patent coverage in some states after a few years to save on annual maintenance fees is not possible with Unitary Patents. The inability to selectively abandon a Unitary Patent in some states to save costs is one consideration in deciding whether to validate a European Patent as a Unitary Patent or as a group of national patents.
The Unitary Patent translation regulation
27. Why is the translation regulation important?
Translations are a major part of patenting costs in Europe and can be an obstacle to obtaining protection throughout the EU. EU Regulation 1260/12 provides the potentially less expensive translation arrangements for Unitary Patents. It recognizes English as the principal language and eliminates most existing, applicant-funded translation requirements during an initial, transitional period, which will be from six to 12 years from 1 June 2023. Eventually, translations will be unnecessary, except possibly in the case of litigation.
28. What are the current translation provisions for Unitary Patents?
During a transitional period of six to 12 years from 1 June 2023, only one translation will be required in connection with Unitary Patent validation:
- Where the language of proceedings at the EPO is French or German, the patent proprietor will have to provide a translation of the European Patent into English.
- Where the language of proceedings at the EPO is English, the patent proprietor will have to provide a translation of the European Patent into any official language of the European Union.
The transitional period translation is for the purpose of public information. The EPO has pointed out that this translation will not be examined. If a translation is needed for litigation, a new (and possibly more accurate) translation can be used.
In the case of European patent litigation, at the request of a court or an alleged infringer, the patent proprietor may be required to provide a full human translation into the relevant language of the court proceedings. However, most divisions of the UPC permit the use of English as the language of the proceeding; therefore, it probably will not be necessary in most cases to translate European Patents granted in English for litigation.
29. What are the translation provisions for Unitary Patents after the transitional period?
After the transitional period, the plan is to rely on publication of the patent description in one of the EPO’s working languages (English, French, and German), the existing practice of translating the claims into those three languages, and machine translations into the languages of all EU members of the EPO. It is expected that no applicant translations will be required for Unitary Patents when machine translations become sufficiently accurate.
The EPO has launched “Patent Translate,” a machine translation program developed with Google. According to the EPO, “Patent Translate” offers free online access, for information purposes, to automatic machine translations of any European Patent application or patent. Patent Translate is now complete and covers translations between English, French, German, and 29 other languages. See here.
The Unified Patent Court
30. What is the Unified Patent Court Agreement (UPCA)?
It is an agreement (treaty) signed by 24 European Union member states (all except Croatia, Poland and Spain), which created a single UPC system for the EU states, to handle European Patent infringement and validity cases. Eighteen EU states have ratified the UPCA and the UPC now has jurisdiction for their territories. These states are referred to as Contracting Member States.
31.Which EU states are now participating in the UPC?
The following EU states have ratified the UPCA and are now participating in the UPC as Contracting Member States: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia, and Sweden.
32. What are the main parts of the UPC?
The UPC has two instances or levels, the Court of First Instance and the Court of Appeal. The Court of First Instance includes a Central Division having three parts, Local Divisions, and one Regional Division. In most situations, revocation actions will be filed in a technology-appropriate part of the Central Division and infringement actions will be filed in a Local or Regional Division; however, a counterclaim for revocation may be handled by a Local or Regional Division, as explained in FAQ 40.
33. What is the UPC Central Division?
It is a division of the UPC Court of First Instance. Its primary jurisdiction is revocation of European Patents; however, revocation actions may include infringement counterclaims. The Central Division can take decisions on infringement and revocation in unified proceedings. It also has general jurisdiction for infringement actions if the defendant has no residence or place of business within the Contracting Member States of the UPCA or if infringement has occurred in the territories of three or more regional divisions.
In the Central Division, each panel sits in a composition of two legally qualified judges and one technically qualified judge. For actions concerning decisions of the EPO, the panel sits in a composition of three legally qualified judges who are nationals of different Contracting Member States. (See FAQ 42.)
34. Where is the Central Division located?
The Central Division headquarters is in Paris, with additional sections in Munich and Milan. A Central Division case is allocated by technology (according to the primary EPO classification) to a panel of judges in one of the three sections. The Paris seat handles cases in classes B (performing operations, transporting), D (textiles, paper), E (fixed constructions), G (physics), H (electricity), and SPCs for classes A and C. The Munich section handles cases in classes C (chemistry, metallurgy, without SPCs) and F (mechanical engineering, lighting, heating, weapons, blasting). The Milan section handles cases in class A (human necessities, without SPCs).
35. What are the Local Divisions?
The Local Divisions are divisions of the UPC Court of First Instance. The principal competence of Local Divisions is European Patent infringement actions. An action can be brought before a Local Division hosted by a member state where the actual or threatened infringement has occurred or may occur, or where the defendant has its residence. (See FAQ 40.)
If the defendant files a revocation counterclaim, a Local or Regional Division has the discretion to
- Proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate a technically qualified judge with qualifications and experience in the field of technology concerned;
- Refer the counterclaim for revocation for decision to the Central Division, and suspend or proceed with the action for infringement; or
- With the agreement of the parties, refer the case for decision to the Central Division
At least one Local Division has been established in the EU states now participating in the UPC, that are not participating in a Regional Division. The UPCA permits that additional Local Divisions can be set up in Contracting Member States that have had a large number of patent cases. The only state with multiple Local Divisions is Germany, which has divisions in Duesseldorf, Hamburg, Mannheim, and Munich. A majority of the cases filed in the UPC to date have been filed in Local Divisions in Germany.
In the Local and Regional Divisions, each panel consists of three legally qualified judges. In addition, if the panel is handling a counterclaim for revocation, or upon request by the panel, a technically qualified judge is added to the panel. (See FAQ 42.)
36. What is the Regional Division?
The UPCA permits two or more Contracting Member States to establish a shared Regional Division instead of individual Local Divisions. A Nordic-Baltic Regional Division has been established by Estonia, Latvia, Lithuania, and Sweden. Regional Divisions have substantially the same competence and their panels have the same composition as Local Divisions.
37. Where is the Appeals Court located?
The Appeals Court is located in Luxembourg.
38. What is the role of the Court of Justice of the European Union (CJEU)?
The CJEU is the final arbiter of EU law. Like the courts of EU member states, the UPC has authority to refer questions of EU law requiring interpretation to the CJEU for a preliminary ruling. However, efforts were taken in drafting the Unitary Patent regulations and UPC Agreement to minimize the need to involve the CJEU, and there is no provision for appeals to the CJEU. That apparently was due to concerns over potential delays in the CJEU reaching a final decision and the fact that, unlike — for example — the U.S. Supreme Court, the CJEU does not have experience or precedents in patent law.
Interestingly, in the cases involving attacks on the UP and UPC proposals, the CJEU took care to point out that the EPC and the UPCA are separate agreements of participating states to which the EU itself is not a party.
39. How is the UPC governed?
The UPC is governed in accordance with UPCA and Rules of Procedure. The Administrative Committee, created by the UPCA, may revise the Agreement to improve the functioning of the court, based on user consultation and an opinion of the court.
The Presidium is responsible for the management of the court. It is composed of the President of the Court of Appeal, who acts as chairperson, the President of the Court of First Instance, two judges of the Court of Appeal, three judges of the Court of First Instance, and the Registrar as a non-voting member.
The Registry, led by the Registrar (who is the former chair of the Preparatory Committee) fulfils administrative and procedural tasks for the court.
40. What is the competence of the UPC?
The UPC is intended to eventually have exclusive competence (subject matter jurisdiction) with respect to substantially all European Patents, which are granted by the EPO Its competence for Unitary Patents is already exclusive. However, during a transitional period extending at least through May 31, 2030, the UPC’s competence relating to classic (bundle) European Patents is shared with national courts. (See FAQs 27-29 regarding the transitional period and its provisions.) Also, during the transitional period, proprietors of classic (bundle) European Patents (but not Unitary Patents) can opt out of UPC competence. (See FAQs 47-51 regarding opt-out.) It is unclear whether an opt-out during the transitional period will stay in effect after that period ends. (See FAQ 49.)
According to Art. 33 UPCA, the divisions of the UPC’s Court of First Instance have the following competencies:
- Actions for or relating to infringement, provisional and protective measures and injunctions, damages or compensation derived from provisional protection and/or prior use shall be brought before the:
- Local/Regional Division where:
- The infringement has occurred or
- The defendant has residence or place of business.
- If the defendant has no residence or place of business within the Contracting Member States of the UPCA:
- The Local/Regional Division where the infringement has occurred or
- The Central Division
- If the concerned Contracting Member State has no local/regional division: the Central Division
- Local/Regional Division where:
- Actions for revocation or non-infringement shall be brought before:
- The Central Division
- Local/Regional Division, where an action for infringement has been filed if the revocation action or the action for non-infringement is between the same parties referring to the same patent
- If a counterclaim for revocation is filed in infringement proceedings, the Local/Regional division may proceed with one of the following options:
- Proceed with both actions;
- Refer the counterclaim for revocation to the Central Division (bifurcation); or
- With the agreement of the parties, refer the whole case to the Central Division
- Actions concerning decisions of the EPO in carrying out the tasks referred to in Article 9 of Regulation (EU) 1257/2012 (see FAQ 13 above) shall always be brought before the Central Division.
41. How is the shared competence managed during the transitional period?
Unless an action has already been brought before the UPC, a proprietor of or an applicant for a classic (bundle) European patent granted or applied for prior to the end of the transitional period, shall have the possibility to opt out from the exclusive competence of the UPC by notifying their opt-out to the Registry. In that case, the only litigation thereafter that is possible involving the patent will be in the appropriate national courts for nationally validated parts of the European Patent. (See opt-out FAQs 47-51 below.)
If the classic (bundle) European patent has not been opted out of the UPC, the filing of the first action involving the patent will establish exclusive competence with respect to the patent in the court of filing, in accordance with the Brussels Regulation.
42. Who are the UPC judges?
The UPC is made up of internationally composed panels, with legally qualified judges and technically qualified judges. The judges have been appointed by a committee of the participating states, on the basis of a list prepared by an independent committee of patent practitioners. There were a large number of indications of interest in being a UPC judge from qualified persons. Some were identified as already highly qualified to serve as judges and others were given further training.
Judges are appointed for a term of six years and may be re-appointed.
Some judges work full-time at the UPC, while others work part-time at the UPC and part-time at another occupation, such as a national court judge or patent attorney. Rules have been established to avoid conflicts of interest.
Every panel in the UPC is multinational, with legally qualified judges from at least two EU states.
In the Central Division, the panel handling a case always has two legally qualified judges and one technically qualified judge.
Any panel of the Local Divisions sits in a multinational composition of three legally qualified judges. Upon request by any party or by the panel on its own initiative, the panel can request an allocation of a technically qualified judge with qualifications and experience in the field of the technology concerned. Every Local Division panel has at least one judge from the host state. In Local Divisions in states with 50 or more patent cases per year (currently France, Germany, Italy, and the Netherlands), two judges of the panel are from the host state.
The composition of panels in a Regional Division is similar to that in Local Divisions; however, two legally qualified judges must be from the region and one from outside the region.
43. What law is applied by the UPC?
The primary substantive law in the UPC is the EPC, the same substantive law governing the grant of European Patent by the EPO However, the UPC makes its own interpretations of the EPC. It is not bound by decisions of the EPO Boards of Appeal or national courts in unrelated cases. The procedural law and law concerning infringement in the UPC is the UPCA and the UPC Rules of Procedure.
According to the UPCA, EU law has primacy. As a result, decisions of the CJEU are binding for the UPC. However, the UPCA was designed to minimize referrals to the CJEU and in most cases, the decisions of the UPC Court of Appeal will be final.
The Court of Appeals has two panels. It generally sits in a multinational composition of five judges, three legally qualified judges who are nationals of different Contracting Member States and two technically qualified judges with qualifications and experience in the field of technology concerned. In actions concerning decisions of the EPO, the panel sits in a multinational composition of three legally qualified judges. The legally qualified judges are permanent, and the technically qualified judges are assigned from the pool of judges on a cases-by-case basis.
44. What languages are used in the UPC?
The default provision for cases at the Central Division is to use the language in which the patent concerned was granted.
The UPCA’s default provision for cases at a Local or Regional Division permits use of one or more official language(s) of Contracting Member State(s) participating in the division, designated by the participating state(s). However, those states also may designate one or more of the official languages of the EPO (English, French, or German) for use in their local or regional division.
If the parties in a Local or Regional Division case and the panel to which the case is assigned agree, the language in which the patent was granted may be used as the language of proceedings. If the panel does not approve the parties’ choice, the parties may request that the case be referred to the Central Division. The President of the Court of First Instance also has authority to require the use of the language in which the patent was granted at the request of one of the parties and after having heard the other parties and the competent panel.
The language of cases before the Court of Appeal normally will be the language of proceedings before the Court of First Instance; however, the parties may agree on the use of the language in which the patent was granted as the language of proceedings or, with the agreement of the parties, the Court of Appeal may decide to use another official language of a Contracting Member State for all or part of the case.
As a practical matter, it appears likely that most UPC proceedings will be conducted in English because a majority of European Patents are granted in English, because the common language of the judges on the panels is likely to be English, and because many Contracting Member State(s) participating in Local or Regional Divisions have announced that their division would permit or require the use of English. For example, English is the sole language in the Nordic-Baltic Regional Division (established by Estonia, Latvia, Lithuania, and Sweden).
Initially, the largest number of cases were filed in German because the German Local Divisions had not yet decided whether to permit use of English. Now, with those divisions having to permit use of English, the majority of UPC cases are being handled in English.
45. Who can represent the parties in the UPC?
Representation can be by either:
- Lawyers authorized to practice before national courts of a UPC Contracting Member State; or
- European Patent Attorneys with appropriate litigation qualifications. It is not necessary for such persons to be nationals of an EU state or a UPC Contracting Member State.
Most German patent attorneys and many from other states have the necessary appropriate litigation qualifications.
46. How is the UPC funded, and are there court fees?
The operation of the UPC is funded entirely by court fees, although participating member states are expected to pay at least some of initial costs for establishing the court. There are both fixed fees and, for certain actions, an additional value-based fee, similar to the system in Germany. See the official “Rules on Court fees and recoverable costs” with a “scale of recoverable cost ceilings,” and related guidelines here.
Opt-out
47. What is the opt-out?
During the UPC Transitional Period (see FAQs 27-29), both the UPC and national courts will have shared competence for litigation involving classic European Patents; however, the proprietors of such patents may opt out of the UPC, in which case only the national courts would have jurisdiction over the various national parts of that European Patent. (The UPC will always have exclusive competence for litigation involving Unitary Patents and it is not possible to opt out of the UPC with respect to a Unitary Patent.)
A party who opts out of the UPC for a patent may later withdraw the opt-out (informally referred to as “opt-in”) if there is no pending litigation in the UPC but may not thereafter opt out again.
A party can only opt out if an action involving the patent has not already been brought before the UPC. Similarly, a party can only opt in if an action involving the patent has not already been brought before a national court.
There is no official fee to opt out or opt in.
48. What is the opt-out procedure?
The UPC maintains a Registry. Owners of classic European Patents, both those now in force and those validated in the future, will be able to file opt-out requests with the Registry. Once an opt-out statement is filed, the UPC will not have jurisdiction over the patent, and it can only be enforced and attacked through national procedures. Article 83 also permits the owner(s) of European Patents to later withdraw its opt-out (i.e. opt-in), as discussed further below.
Therefore, generally, in order to opt-out of the UPC:
- Owners of European Patents granted before the Unitary Patent system starts will file an opt-out request at the UPC; and
- Prompt filing could avoid the possibility of an invalidation or noninfringement proceeding being filed in the UPC before the patent owner can opt out
It will be possible to withdraw a UPC opt-out request (“opt-in”) after opting out. Therefore, some persons have suggested a tactic of opting out as soon as practical and then — if the patent owner wishes to enforce a classic European Patent in the UPC — opt in immediately before filing a complaint. However, that procedure would only offer a head start and forum selection advantage. Once an infringement action is filed in the UPC, the defendant can raise invalidity and noninfringement defenses and counterclaims in that court.
49. Will an opt-out be effective only for the transitional period or continue for the life of the patent?
This question will have to be decided when the issue arises in a case. Many commentators have opined that opt-out was intended to be for the life of the patent. Before the UPC opened, that opinion appeared in the FAQ part of the UPC Preparatory Committee’s website; however, that FAQ response was not binding and no longer appears on the UPC website. An alternative view is that the opt-out is a part of transitional provisions and, therefore, should only have effect in the transitional period. The issue will have to be resolved by the courts. (See the article “Will a UPC opt-out survive the transitional period?” here.)
50. What law will be applied in national courts in cases involving a patent opted out from the UPC?
Questions of what law national courts should apply in cases involving a patent opted-out from the UPC will have to be decided when the issues arise in cases. For example, should the UPC and national courts apply the same substantive law and, if so, which provisions are substantive and which are procedural?
Some guidance is provided by a UPC Preparatory Committee interpretative note on “Consequences of the application of Article 83 UPCA,” which is available here. It reached the conclusion that if an opt-out is in effect “(or, if during the transitional period the case is brought before a national court), the [UPC] Agreement no longer applies to the application for a European patent, the European patent or the Supplementary Protection Certificate concerned. As a consequence, the competent national court would have to apply the applicable national law.” That note, however, is not binding and there is considerable disagreement among commentators about its conclusion. Some commentators are urging harmonization of national laws with the UPC.
51. Deciding whether to opt out
There are a number of factors to be considered in deciding whether to register European Patents as Unitary Patents, and whether to opt out of the UPC for classic European Patents. See our “Questions Patent Owners May Ask Themselves Regarding Opt-Out” webpage here.
The possibility of “central attack,” a single proceeding in which a patent can be attacked for multiple jurisdictions, is always raised when transnational IP proceedings are proposed. The UPCA’s requirement that revocation actions be filed in its Central Division minimizes the risk of revocation by less experienced judges. The transitional UPC opt-out procedure is a way of avoiding central attacks on classic European Patents, except for the possibility of an opposition in the EPO during the nine months following grant of the European Patent.
Objections based on the potential for “central attack” are not new. Similar objections were raised before the EPO and European Trade Mark Office were established; however, those objections have had little effect in deterring use of those offices.
As a practical matter, harmonization of IP laws in the EU and increasing communication between European IP judges have reduced the likelihood of different results with respect to the same European Patent in different EU states.
For more information about Unitary Patents and the Unified Patent Court, please contact Fish & Richardson attorneys Moritz Ammelburg, Patrick Finn, or Bernhard Lorenz.
Revised and updated December 2024