The Unitary Patent/Unified Patent Court system (UP/UPC system) provides a single patent and related court across multiple participating member states of the European Union. The Unitary Patent (UP) has unitary effect in all participating member states, providing a cost-effective and efficient way to obtain patent protection across multiple EU countries. It is also important to understand, however, that the Unified Patent Court (UPC) has jurisdiction over all UPs and over all “classic” European Patents (EPs) from EU participating member states unless such patents have explicitly been opted-out of the system. Thus, the UPC offers a unified forum for patent litigation, reducing the need for parallel proceedings in multiple national courts. 

There are currently 18 member states of the European Union that are participating in the system, including Germany, France, Italy and the Netherlands. Countries, which are not part of the European Union, such as the United Kingdom, cannot be participating member states. 

The system provides significant advancements in the European patent system on a one-stop-shop basis, offering streamlined procedures (although during the transitional period (see Section 1.3 below) there is still a layer of complexity), cost-effective protection and robust enforcement mechanisms. Patent practitioners in Europe and also in non-European countries should familiarise themselves with these developments to effectively advise their clients on leveraging the benefits of the UP and UPC and maximising the value of their intellectual property.

1. Unitary Patent

The Unitary Patent (UP) is a significant development in the European patent system. It is designed to provide uniform protection across multiple EU countries through a single patent (no bundle) that has unitary effect, i.e. provides uniform protection in all participating member states. Further, a UP can be jointly enforced and likewise jointly invalidated for all UP/UPC states.

1.1 Acquiring a Unitary Patent

The basis for a UP is a granted European patent (EP) having the same set of claims for all member states. Only upon specific request for unitary effect filed with the European Patent Office (EPO) will a UP be granted. 

The request for unitary effect must be filed at the latest one month after the date of the publication of the mention of grant in the European Patent Bulletin. Practical tip: Receipt of the communication under Rule 71(3) EPC (intention to grant) is a good time to think about whether you would like to obtain a UP. 

Together with the request for unitary effect a translation of the EP must be filed. If the EP is in French or German, the translation must be into English. If the EP is in English, any other official language of the EU can be selected for the translation. Practical tip: if you are validating your EP in Cyprus, the Czech Republic, Greece, Hungary, Poland, Slovakia or Spain (i.e. EU countries that require a translation of the EP for validation, but do not (yet) participate in the UP/UPC system), you can “re-use” the translation required for validation for the request for unitary effect. Indeed, Spanish has been the most popular translation language used by applicants requesting Unitary Patents in 2023 and 2024.

The request for unitary effect is free of charge (no filing or validation fees). 

If the request is accepted, a UP will be granted providing uniform protection in all participating EU countries, currently 18, with more expected to join in the future. As of November 2024, the participating countries are:

• Austria.
• Belgium.
• Bulgaria.
• Denmark.
• Estonia.
• Finland.
• France.
• Germany.
• Italy.
• Latvia.
• Lithuania.
• Luxembourg.
• Malta.
• Netherlands.
• Portugal.
• Romania.
• Slovenia.
• Sweden.

1.2 Costs of a Unitary Patent

While there are no official fees for the request for unitary effect, there will be costs for the translation of the respective EP. For European SMEs, NPOs and universities/public research organisations a compensation scheme (lump sum of EUR 500.00) for the translation costs is available. 

The renewal fees for UPs are roughly equivalent to the combined renewal fees of the four most frequently validated member states (Germany, France, the Netherlands and Italy). This fee structure is designed to be cost-effective, especially for applicants seeking protection in multiple EU countries. Thus, whenever protection in four or more countries is desired, a UP is likely the more cost-effective option. 

For a comparison of national renewal fees of a classically validated EP versus UP renewal fees, please use Berggren’s UP cost simulator here: www.berggren.eu/en/up-cost-simulator. 

The renewal fees for a UP are payable annually to the EPO. The fees increase progressively over the life of the UP, with the highest fees payable in the final years. A renewal fee reduction of 15% is available if the proprietor files a statement with the EPO to the effect that they are prepared to allow any person to use their invention as a licensee in return for appropriate consideration. Such statement will be entered in the Register for unitary patent protection free of charge. 

1.3 Opt-out 

During the transitional period, proprietors can opt a European patent or European patent application out of the UPC’s jurisdiction. The transitional period is seven years. However, it may be prolonged up to further seven years (on the basis of a broad consultation with the users of the UP/UPC system and an opinion of the UPC). An opt-out is effective for the lifetime of the EP unless the owner decides to withdraw it. Opting out prevents the national parts of the EP from being litigated before the UPC. A UP cannot be opted out from the jurisdiction of the UPC. Caveat: if a request for unitary effect is filed, a previously filed opt-out for the EP application is deemed to be withdrawn. 

No official fees are due for an opt-out request. 

Withdrawing an opt-out can be done only one time and cannot be reversed. In other words, once a patent has been opted back into the UPC’s jurisdiction, it cannot be opted out again. Thus, this decision should be carefully considered, as it will determine the forum for any future litigation involving the patent. An opt-out can be withdrawn any time provided no action has been brought before a national court, in a matter over which the UPC has jurisdiction, in respect of the application, patent or SPC subject to the opt-out. 

1.4 UP statistics 

In 2023, around 40% of all eligible European Patents were opted-out. Since 1 June 2023, nearly 40,000 UPs have been granted with a UP request rate of 17.5% in 2023 and 25% in 2024. With respect to the origin of the applicants requesting UPs, the European Patent Office provides the following information (updated in October 2024):

1.5 Filing strategies 

During the transitional period, the new European Patent System allows applicants to implement patent prosecution strategies aimed at building stronger patent portfolios.

a) Divisional application strategy 1

Based on divisional application strategy 1 as depicted in Figure 2, the applicant can obtain a “parent” European patent application with a wider scope of protection and the granted European patent will be validated nationally in the selected EPC member states. The “parent” European patent will be opted out of the jurisdiction of the UPC. The divisional application(s) are strategically filed with claims targeting a narrower scope of protection to avoid a double patenting objection and when granted, the unitary effect will be requested for the divisional application(s). Divisional application strategy 1 enables building a potentially stronger patent portfolio where the risk of central attack against the “parent” European patent can be effectively mitigated (because it was opted out of UPC jurisdiction) and the UPC can still be utilised, if needed, with the divisional patent(s). This strategy may be beneficial, for example, if the wider scope of protection provided by the “parent” European patent may have some weaknesses (from a patentability standpoint) in comparison to the narrower divisional(s).

b) Divisional application strategy 2 

Divisional application strategy 2 as depicted in Figure 3 is, in practice, the inverse of the strategy depicted in Figure 2. In this case, the “parent” European patent is a Unitary Patent, and the divisional patent(s) are nationally validated in EPC member states. The divisional patent(s) have a narrower scope of protection to avoid any double patenting objection and are opted out of the UPC’s jurisdiction. This strategy may be useful in various situations if the risk of central attack against the “parent” European patent can be accepted and the divisional(s) provide a preferable scope of protection in certain states, for example. This strategy may be beneficial, for example, if the wider scope of protection provided by the “parent” European patent may have some weaknesses (from a patentability standpoint) in comparison to the narrower divisional(s) and certain states even with a narrower scope of protection are more important for the patentee than others.

c) Combination strategies 

Certain EPC and UPC member states such as Germany, France, Italy, the Netherlands, Austria, Denmark, Estonia, Finland, Malta, Slovenia and Sweden allow literal double patenting. Thus, combination strategies where an EP application/UP is combined with national patent applications/patents are available. Such a combination can be achieved either via Paris Convention or same-day direct filings before the EPO and the respective national offices or by utilising a PCT application and entering the regional phase before the EPO and selected national phases before the respective national offices in parallel within the time limits of the PCT (where such national route is not blocked, e.g. Germany, Italy, Finland, Sweden). 

Figures 4 and 5 provide examples of combination strategies where a Unitary Patent is combined with national patent applications/patents by utilising a PCT application. 

Generally, combination strategies utilising national patent application filings may be beneficial for building stronger portfolios and balancing risks. Utilising national patents in combination with Unitary Patents is especially beneficial if there are certain states that are particularly commercially important for the patentee and where double patenting is permitted. Also, if a variation in the scope of protection possibly resulting from national patents can be accepted, national patents in combination with a Unitary Patent can be an alternative that may increase the value of patent portfolios. Of particular note, in Germany, delaying examination requests up to seven years from the date of filing is possible and would allow optimisation of prosecution and the scope of protection in view of the claims already granted based on the EP application. 

While the opt out-based divisional strategies 1 and 2 described above remain useful for the duration of the transitional regime, national applications based on combination strategies remain applicable after the transitional regime as well. 

2. Licences and co-ownership agreements under the UP/UPC system 

Parties of a licence or co-ownership agreement have several options available, which need to be taken into consideration when drafting relevant agreements. These options include, for example:

• the choice between a Unitary Patent or a classic validated European Patent; 
• the possibility to opt-out from a classic European Patent or withdraw an existing opt-out; 
• the litigation management of Unitary Patents by licensee(s) and co-owners, given that the new system introduced new provisions which the parties allowed to supersede in their agreements (e.g. Article 47 UPCA allows an exclusive licensee to bring an action in front of the UPC without the need to obtain the patent owner’s prior consent);
• the rights and responsibilities of the co-owners of a Unitary Patent: certain criteria should be applied to identify the applicable law of the patent as an object of property, but the parties can avoid the application of such provisions by defining their rights and responsibilities in detail in the agreement; and
• the right to sublicense a Unitary patent by a licensee: also, in this case certain provisions from national law of a participating member state can apply (according to the same criteria referenced above), in the absence of a detailed provision in the licence agreement.

Territorial scope of licences 

One of the key considerations in licensing UPs is the territorial scope of the licence. Unlike traditional European patents, which must be validated and maintained separately in each country, a UP provides uniform protection across all participating EU member states. This means that a licence for a UP can cover the entire territory of the UP with a single agreement. 

However, it is also possible to grant licences that cover only certain countries within the UP territory. This can be useful for patent owners who want to tailor their licensing strategy to specific markets or regions. Licence agreements must clearly specify the countries covered by the licence to avoid any ambiguity or disputes. 

3. The Unified Patent Court 

The UPC is a unified court system with jurisdiction over UPs and EPs from participating member states, which have not been opted out (see Section 1.3 above). Decisions of the UPC are enforceable in all UP/UPC states where the patent is in force, which provides a streamlined and efficient forum for patent litigation, reducing the need for parallel proceedings in multiple national courts. 

During the transitional regime an action for infringement or for revocation of a classically validated EP may still be brought before national courts instead of before the UPC. 

3.1 Structure of the UPC

The UPC consists of a Court of First Instance (CFI), a Court of Appeal (CoA), and a Registry. 

The CFI is composed of three types of divisions: 

• local divisions (LDs); 
• regional divisions (RDs); and 
• the central division (CD). 

LDs are established in individual UP/UPC states, while RDs serve multiple UP/UPC states. The CD has sections in Paris, Munich and Milan. 

The LDs and RDs handle infringement actions, while the CD handles revocation actions and actions for declarations of non-infringement. The CD also has jurisdiction over cases involving supplementary protection certificates (SPCs) and certain other matters. 

The CoA, located in Luxembourg, hears appeals from the CFI and has the final say on matters of law and procedure. 

As of 1 October 2024, 394 cases were pending before the CFI (the official statistics indicate 503, but this is misleading since each defendant in an infringement action brings their own counterclaim for revocation; the 212 counterclaims in the official statistics in fact relate to 103 different infringement actions). 

The language of proceedings is predominantly English (53%), followed by German (42%). 

The four German LDs account for almost 80% of infringement actions: 70 in Munich, 42 in Düsseldorf, 25 in Mannheim, and 14 in Hamburg. 

Revocation actions: 37 in Paris CD, 5 in Munich CD and 3 in Milan CD.

Table 1 

3.2 Procedure before the UPC

The procedure before the UPC includes several stages. Besides the main proceedings, the UPC also has the authority to grant preliminary injunctions (PIs). The court’s decisions are enforceable across all participating member states where the patent is in force, providing a powerful tool for patent enforcement. The procedure before the UPC is designed to be efficient and streamlined, with strict timelines for each stage of the proceedings and a target of resolving the first instance proceedings within approximately 12 months of service of the statement of claim. 

The statement of claim is generally the first stage in the UPC procedure, and it must include a detailed description of the facts and legal arguments, as well as any supporting evidence. The defendant then has three months to file a defence, which must also include a detailed response to the claimant’s arguments and any counterclaims.

The court may hold a preliminary hearing to discuss procedural matters, such as the admissibility of evidence and the scheduling of the main hearing. The main hearing is typically held within one year of the filing of the statement of claim, although this timeline can be extended in complex cases. During the main hearing, both parties present their arguments and evidence, and the court may hear expert testimony and cross-examine witnesses.

The UPC also has the authority to grant PIs, which can be crucial for preventing ongoing infringement. PIs can be granted on an ex parte basis (without notice to the defendant) in urgent cases, but the defendant has the right to request a hearing to challenge the injunction. As a precautionary measure against PIs, so-called protective letters can be filed with the UPC. 

3.3 Estimated costs and compensation

The costs of proceedings before the UPC include court fees, attorney fees and other litigation expenses. The UPC has established a fee schedule, with fees varying based on the type and complexity of the case. Additionally, the UPC may award compensation to the prevailing party, covering reasonable legal costs and other expenses incurred during the proceedings. This compensation is intended to ensure that the winning party is not financially disadvantaged by the litigation process.

The court fees for UPC proceedings are divided into fixed fees and value-based fees. Fixed fees apply to certain types of actions, such as infringement actions, i.e. EUR 11,000; revocation actions, i.e. EUR 20,000; and applications for provisional measures, i.e. EUR 11,000. A further value-based fee is payable for some actions, including infringement actions, declarations of non-infringement and certain appeals, apply to appeals as to actions with a value in dispute exceeding EUR 500,000, with the fee increasing progressively based on the value in dispute. The maximum value-based fee is EUR 325,000 for actions with a value in dispute exceeding EUR 50 million.

In addition to court fees, parties must also consider attorney fees and other litigation expenses, such as expert witness fees and translation costs. The UPC has established guidelines for the recovery of legal costs, with the prevailing party entitled to recover reasonable costs from the losing party. The amount of recoverable costs is capped based on the value in dispute of the action, with the maximum cap set at EUR 2 million for actions with a value exceeding EUR 50 million. The UPC’s compensation system is designed to ensure that the prevailing party is not financially disadvantaged by the litigation process. The court may award compensation for reasonable legal costs and other expenses incurred during the proceedings, including court fees, attorney fees, expert witness fees and translation costs. The amount of compensation is determined based on the complexity of the case and the conduct of the parties, with the aim of ensuring that the winning party is fairly compensated for their efforts. 

3.4 UPC strategies 

UPC revocation action instead of or in parallel with opposition at the EPO 

The UPC hears revocation actions or counterclaims regardless of whether an opposition to an EP has been filed with the EPO. The UPC revocation action may be conducted in parallel or suspended until the end of the opposition proceedings. In view of the comparatively long duration of opposition proceedings at the EPO, it appears likely that the UPC will not stay revocation actions due to parallel oppositions at the EPO. However, an invalidation of an EP declared by the EPO is binding on the UPC. 

Due to the high speed of UPC proceedings, i.e. one year to 18 months compared to the duration of opposition proceedings at the EPO, i.e. two to three years, it may be beneficial to file a revocation action at the UPC instead of an opposition at the EPO, despite the significantly higher official fees (which might be mitigated in view of the possible compensation of costs if the revocation plaintiff prevails). A revocation action at the UPC also could be filed in addition to an opposition at the EPO, such that the (revocation action) plaintiff has a further chance to invalidate the EP in case the UPC upholds the patent in its entirety or in amended form. 

4. UPC case law

4.1 Claim construction at the UPC 

For the determination of the scope of protection, the claims are not only the starting point, but the decisive basis. The claims must always be interpreted based on the description and the drawings (if any). However, the claims do not merely serve as a guideline, but their subject-matter also extends to what, after examination of the description and the drawings, appears to be the subject-matter for which the patent proprietor seeks protection. The claims are to be interpreted from the point of view of a person skilled in the art. These principles for the interpretation of claims apply equally to the assessment of infringement and validity of the patent. (See UPC_CoA_335/2023, NanoString v. 10x Genomics/Harvard at www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf.)

Instead of applying a philological understanding of the claim wording, the person skilled in the art determines the technical meaning of the terms used based on the description and the drawings. Based on the function of each individual feature in the context of the whole claim, it must be deduced which technical function said features actually have individually and as a whole. In particular, the patent description may represent a patent’s own lexicon. (See UPC 1/2023, Sanofi v. Amgen at 
www.unified-patent-court.org/sites/default/files/files/ api_order/7BD3093D60CBD34C06940FCA0C598CEE_en.pdf.)

4.2 Opt-out and opt-in

There are already diverging orders of the UPC CFI related to the validity of opt-outs and withdrawals of opt-outs (opt-ins).

The Paris CD held that there is no general principle within the UPCA that precludes the UPC from asserting jurisdiction in revocation proceedings merely because other proceedings relating to the same patent are pending before other courts. The interests of claimants filing revocation lawsuits before and after the entry into force of the UPCA are distinct. A party which filed a lawsuit in a national court before the entry into force of the UPCA should not be barred from filing a lawsuit before the UPC because, at the time of filing the national lawsuit, the UPC was not yet operational. The Paris CD reasoned that at that time a claimant could not make a choice between the UPC and a national court. In contrast, a claimant which files a lawsuit during the transitional period can make such a choice. (See UPC_CFI_484/2023, Mala Technologies v. Nokia Technology at 
www.unified-patent-court.org/sites/default/files/files/api_order/851BC4F89F5395E3D04140D997C6259B_en.pdf.)

A previous decision by the Helsinki LD determined that withdrawal of an opt-out was ineffective due to national infringement and invalidation proceedings before German courts and, as a result, the UPC lacked competence. The Court considered that reading of Article 83(4) UPCA and Rule 5.8 RoP causes a withdrawal of an opt out to be irrespective of whether the national action is pending or if it has been concluded, and in this case the German national action was still pending on the date of withdrawal of the opt out. This decision was reversed by the Court of Appeal, which stated that opt-outs can be withdrawn even if there is a pending national action, as long as the national action was filed before entry into force of the UPC (i.e. 1 June 2023). (See UPC_CFI_214/2023, AIM Sport Vision v. Supponor at www.unified-patent-court.org/sites/default/files/upc_documents/ 2023-10-20-ld-helsinki-upc_cfi_214-2023-ord_572699-2023-act_551054-2023-and-ord_581208-2023-app_580529-2023-anonymized.pdf and UPC_CoA_489/2023 at https://www.unified-patent-court.org/sites/default/files/files/api_order/12B21CBC1FBCB93A97568A538CAA390D_en.pdf.)

Presumably, the different approaches taken by these two courts will be resolved by subsequent UPC jurisprudence.

4.3 Opt-out by co-owners

The UPC CoA stated that “a valid opt out application requires that it is lodged by or on behalf of all proprietors of all national parts of a European patent”. 

In this case, the original owner of a pending European patent application transferred the German part of the application by means of an Assignment Agreement. However, the subsequent opt-out of the European patent application for “all EPC states” was filed only by the original patent owner and there was no evidence of the consent of the assignee or that the opt-out was also filed on behalf of the assignee of the German part. The opt-out was thus found invalid. (See UPC_CoA_79/2924, Neo Wireless GmbH & Co KG v. Toyota Motor Europe NV/SA at 
www.unified-patent-court.org/sites/default/files/files /api_order/5F9795874E86966B3D3A6B1A61BC2143_en.pdf.)

The relevant legal provisions for the UP/UPC system include the following: 

• Regulation (EU) No 1257/2012 (www.epo.org/en/ legal/up-upc/2022/eu20121257.html).
• Rules relating to Unitary Patent Protection (UPR) (www.epo.org/en/legal/up-upc/2022/upr.html).
• Rules relating to Fees for Unitary Patent Protection (RFeesUPP) (www.epo.org/en/legal/up-upc/2022/upf.html).
• Agreement on a Unified Patent Court (UPCA) and its amendment of 26 June 2023 (www.unified-patent-court.org/sites/default/files /upc_documents/agreement-on-a-unified-patent-court.pdf and www.unified-patent-court.org/sites/default/files/ upc_documents/decision-d_ac_03_26062023_-amendment-upca.pdf).
• Rules of Procedure of the Unified Patent Court (RoP) (www.unified-patent-court.org/sites/default/files/upc_documents/ rop_en_25_july_2022_final_consolidated_published_on_website.pdf).
• European Patent Convention (EPC) (link.epo.org/web/EPC_17th_edition_2020_en.pdf).