This booklet providers and overview of the Unitary Patent and Unified Patent Court in Europe. The implementation of the UP and UPC in Europe will significantly change the system for grant and enforcement of European patents. These exciting developments mean that all interested parties will need to review filing and enforcement strategies in order to be ready for the launch of the new systems in Europe.

1. The Unitary Patent
and Unified Patent
Court in Europe
An overview
Edition 2

2. 1
Introduction
This booklet is intended to be a brief
introduction and overview of the new
Unitary Patent system being introduced
in the European Union together with a
new Unified Patent Court (UPC).
At the time of writing, the system has
not yet come into effect, but the relevant
legislation has been enacted. We are now
awaiting final ratification of the UPC
Agreement by a sufficient number of
states in order for the new system to
become operative.

3. 2
The Unitary Patent and
Unified Patent Court in Europe
Recent developments in the European Union
(EU) mean that it should soon be possible to
obtain a patent with unitary effect (a “Unitary
Patent”) across the majority of the member states
of the EU. In addition to the new Unitary Patent,
a central patent court, the Unified Patent Court
(UPC), will come into existence to decide on
matters relating to infringement and validity of
European patents – both the new Unitary Patent
and existing standard European patents.
The new arrangements will come into effect
from the date on which the related Agreement
on a Unified Patent Court enters into force. The
Unified Patent Court Agreement will enter into
force after thirteen contracting member states
(including the UK, France and Germany) have
ratified the Agreement.

4. 3
The Unitary Patent
The new patent with unitary effect is known as
the “Unitary Patent”, in contrast to the current
European patent which is referred to as either a
“classic European patent” or “standard European
patent”. The classic or standard European patent
only takes effect in those European states which
are designated in the application and where a
national validation procedure is completed.
The new Unitary Patent will remove the
requirement to complete such national validation
procedures. It will provide a simple route to
obtaining patent protection in Europe from
a single European patent application.
The development will provide a single, unitary
European patent which would include all
participating EU member states. Upon grant,
there will be no need for separate national
validations in each of these states. Instead, a
centralised validation procedure will require more
limited formalities, including only one translation
of the patent.
The Unitary Patent will be administered by the
European Patent Office (EPO). Under the new
system, a European patent application will be
filed in the normal way, with a designation of
all contracting states to the European Patent

5. 4
Convention (EPC) (and consequently all EU
member states). The application will be searched
and examined as at present for European patent
applications. Upon grant of the patent, the patentee
will have one month to elect for the patent to have
‘unitary effect’ in the participating EU member
states. Patent protection in the other designated
states will be obtained as at present, by completing
the national validation procedures within three
months of grant.
The system for requesting unitary effect will
therefore co-exist with the current system for
obtaining patent protection in the EPC contracting
states as well as the separate national patent systems.
For patentees that validate European patents in
all EPC states, the Unitary Patent may be useful for
a number of reasons, including a reduction in cost
at grant. Patentees that require patent protection
in a smaller number of EPC states may prefer
to continue with the current system of separate
national validations.

6. 5
Details of the Unitary Patent
As indicated above, Unitary Patents are to be
granted by the EPO from a European patent
application. A request for unitary effect will need
to be filed within one month of the publication
of mention of grant of the patent in the European
Patent Bulletin.
Consequently, there are no changes to the
application procedure before the European
Patent Office. After the new law comes into effect,
European patent applications will continue to
be filed at the EPO in the same manner as at
present, in English, French or German. If, on grant,
the patentee decides that the European patent
is to have unitary effect in the participating EU
member states, then some additional formalities
also need to be complied with.
At the time of requesting unitary effect, Unitary
Patents filed in French or German must be
translated into English. Unitary Patents filed in
English must be translated into any other official
language of the European Union.

7. 6
Territorial scope of
the Unitary Patent
The Unitary Patent will have effect in the member
states of the EU which have decided to take part
and which have also ratified the Agreement on a
Unified Patent Court.
Participating EU member states:
Austria, Belgium, Bulgaria, Cyprus, Czech Republic,
Germany, Denmark, Estonia, Finland, France, the
United Kingdom, Greece, Hungary, Ireland, Italy,
Latvia, Lithuania, Luxembourg, Malta, Netherlands,
Portugal, Romania, Slovenia, Slovak Republic
and Sweden.
Spain has decided not to take part in the Unitary
Patent at present. Poland has not yet signed the
UPC Agreement and the Unitary Patent will
therefore not include Poland until it does so.
Croatia has not yet indicated whether it will take
part or ratify the UPC Agreement.

8. 7
European Patent Convention (EPC)
The EPC governs the operation of the European
Patent Office (EPO). The EPC is not a treaty
of the EU. The contracting states to the EPC
include countries which belong to the EU, but
also countries which have yet to join the EU
(or which, in some cases, may never do so).
EPC contracting states:
Albania, Austria, Belgium, Bulgaria, Switzerland,
Cyprus, Czech Republic, Germany, Denmark,
Estonia, Spain, Finland, France, the United
Kingdom, Greece, Croatia, Hungary, Iceland,
Ireland, Italy, Latvia, Liechtenstein, Lithuania,
Luxembourg, Malta, Macedonia, Monaco, the
Netherlands, Norway, Poland, Portugal, Romania,
San Marino, Slovenia, Slovak Republic, Sweden,
Serbia and Turkey (as of 1 May 2015).
A number of other states have concluded
‘extension agreements’ with the EPO as a
preliminary step to becoming full EPC contracting
states. Such states may be added to a European
patent application on payment of an ‘extension
fee’ per country required.

9. 8
EPC extension states:
Bosnia & Herzegovina and Montenegro
(as of 1 May 2015).
It can therefore be seen that all EU member
states are also EPC contracting states.
EPC contracting states which are also EU
member states:
Austria, Belgium, Bulgaria, Cyprus, Czech
Republic, Germany, Denmark, Estonia, Spain,
Finland, France, the United Kingdom, Greece,
Croatia, Hungary, Ireland, Italy, Latvia, Lithuania,
Luxembourg, Malta, the Netherlands, Poland,
Portugal, Romania, Slovenia, Slovak Republic,
Sweden (as of 1 May 2015).
EPC contracting states which are not EU
member states:
Albania, Switzerland, Iceland, Liechtenstein,
Macedonia, Monaco, Norway, San Marino, Serbia
and Turkey (as of 1 May 2015).

10. 9
The London Agreement for
standard European patents
The national validation procedure for a
standard European patent after grant requires
the completion of various formalities before
the national patent offices. The formalities may
include filing a full translation of the patent
specification as granted or the claims as granted,
filing a power of attorney and/or recording a local
address for service. However, since the coming
into force of the London Agreement in 2008,
increasing numbers of countries are waiving the
need for translations to be filed or are limiting the
requirements to the filing of claim translations.
London Agreement states:
Albania, Croatia, Denmark, Finland, France,
Germany, Hungary, Iceland, Ireland, Latvia,
Liechtenstein, Lithuania, Luxembourg, Macedonia,
Monaco, Netherlands, Norway, Slovenia, Sweden,
Switzerland and the United Kingdom (as of
1 May 2015).
This development means that a standard
European patent may continue to be a valid
alternative to the Unitary Patent.

11. 10
The Unified Patent Court
The new Unified Patent Court will deal with
matters of infringement and validity relating to
European patents and Supplementary Protection
Certificates (SPCs). The new ‘unified’ court will
have jurisdiction over both Unitary Patents and
standard European patents. A transitional period
is provided allowing owners of standard European
patents to opt out of the new system, but in the
long term the new court should have jurisdiction
over all patents granted by the EPO.
The judges in the new Unified Patent Court will
be selected from an experienced pool, with a mix
of nationalities ensured. The language regime for
court proceedings has been devised to provide a
degree of certainty, although there will be some
flexibility for the parties and the court to agree
on changes.
The Unified Patent Court will have a first instance
division and there will be a Court of Appeal
based in Luxembourg. The first instance division
will be composed of a Central Division and a
number of Local and Regional Divisions. The seat
of the Central Division will be in Paris, London
or Munich, depending on the subject matter
of the patent at issue. Paris will take on cases
relating to IT and electronics, with chemical and

12. 11
biotechnological subject matter going to London
and mechanical engineering to Munich.
The number of Local and Regional Divisions is
still to be established under a complex set of rules
which require that the current national courts
can demonstrate that a threshold number of
patent cases are currently being heard. A Local
Division would be based in a single EU member
state whilst a Regional Division could be shared
between several EU member states.

13. 12
Details of the
Unified Patent Court system
As discussed above, the UPC will have jurisdiction
over Unitary Patents, standard European patents
and also SPCs. However, during a transitional
period, it will be possible for owners of standard
European patents to opt-out of the UPC’s
jurisdiction, as described in more detail below.
Any infringement or validity case before the Central
Division will be decided by a panel of judges
(similar to a Board of Appeal hearing before the
EPO). The panel judges of the Central Division
will be composed of two legally qualified judges
and one technically qualified judge. The panel can
be a single judge if the parties agree. The panel will
be composed of mixed nationalities to avoid any
particular national tradition becoming dominant.
In the Local and Regional Divisions, the panels of
judges will be composed of three legally qualified
judges. It will be possible to request an additional,
technically qualified judge. The judge may be
a single, legally qualified judge if the parties
agree. Again, the panel will be composed of
mixed nationalities.
The Court of Appeal for the UPC will be based in
Luxembourg. In the Court of Appeal, the case will
be heard by a panel of judges. The panel will be

14. 13
composed of three legally qualified judges of mixed
nationalities and two technically qualified judges.
Under the UPC, some limited “forum shopping”
will be possible. For example, actions for
infringement may be brought before the Local or
Regional Division in the country/region where
the alleged infringement occurred or where the
defendant has his residence or place of business.
For the Central Division, proceedings will be in
the language of the patent as granted. For Local
and Regional Divisions, proceedings will be in an
official language of the EU which is also an official
language of the member state in which the
Division is located or an official language of the
EPO, if designated as the language of proceedings
of the state. For the Court of Appeal, the language
of proceedings will be language used before the
court of first instance (Central Division or Local/
Regional Division). Some variations on the
language used are allowed on the initiative of
parties and the agreement of the court.
The draft Rules of Procedure provide for discovery
and preliminary injunctions.
There are complex transitional provisions relating
to the competence of the UPC and its jurisdiction.
The transitional provisions govern the ability
of parties to litigate matters before the national
courts in the contracting member states to the

15. 14
UPC Agreement and also the ability of patent
proprietors to opt-out of the jurisdiction of the
UPC for standard European patents.
During a transitional period of seven years,
actions for infringement and revocation of
standard European patents and actions for
infringement and declarations of invalidity of SPCs
may still be brought before national courts instead
of the UPC, if desired.
After expiry of the transitional period, the UPC
will have exclusive jurisdiction over standard
European patents and SPCs, unless they have
been “opted out”. Holders of standard European
patents or patent applications granted or applied
for prior to the end of the transitional period and
holders of SPCs can opt out of the exclusive
competence of the Unified Patent Court by
notifying the Registry of the opt-out at the latest
one month before expiry of the transitional period.
The patent or SPC in question will then be subject
only to the jurisdiction of the competent national
courts for the lifetime of the patent or SPC, unless
the opt-out is withdrawn. It is not possible to opt
a Unitary Patent out of the jurisdiction of the UPC.
The seven year transitional period may, in due
course, be extended by an additional seven years
following a review of the new patent system by
the Administrative Committee.

16. 17
The information contained in this document should
not be applied to any particular set of facts without
first seeking professional advice.
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