Q&A

The start date was 1 June 2023, when both the Court opened and unitary patents could be granted by the EPO. However, before the start date, there were three transitional measures.

Opt-outs may still be filed after the start date of 1 June 2023 but these are at risk of being invalidated by a UPC action filed earlier in time.

Opt-out filing is to be done on a per patent (not per patentee) basis, electronically. There is no fee. You should note that all proprietors of the patent, including (if different) all those proprietors of all national parts of a European patent in states which have ratified the UPC Agreement must be included in the opt-out. However, the UPC has controversially issued guidance that proprietors of national parts of a European patent in countries that have not ratified or even signed the UPC Agreement will also need to be included in the opt out. Until judicial authority to the contrary is provided best practice would be to include the proprietors of all of the national parts of the European patent. It is not what is on the register (neither EPO nor national registers) which determines who is entitled to opt out, but the “real” proprietor(s). Checking the correct proprietors could involve significant due diligence internally in cases of large patent portfolios. Bristows can provide guidance on the procedure for opting out, as well as advice on whether to opt-out.

A key consideration for many patentees will be budgetary. A unitary patent will cover all those countries which have ratified the UPC Agreement by the date of grant. This will be at least 17, these being Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. There will be no validation fee for a unitary patent and only one translation will be required. However, there will be renewal (maintenance) fees, and for patentees who usually validate in fewer than four UPC states unitary protection is likely to be more expensive.

Patentees will, of course, also want to consider the litigation regime applying to unitary patents. These are mandatorily litigated in the UPC, and cannot be opted out. This has upsides and downsides. The main upside is obviously the advantage of central enforcement in a single action. A unitary patent also means it will only ever be subject to the UPC regime, whereas European patents not opted out will be subject to dual UPC/national jurisdiction for a transitional period (of at least 7 years) and susceptible to pre-emptive national actions for revocation which may block the ability of the patentee to use the UPC. On the downside, some teething problems are possible with the UPC meaning that enforcement may not be as straightforward as hoped. For some time, there will certainly be a good degree of uncertainty both as to procedure and outcome from the Court’s divisions while a body of case law and practice is developed. Further, the flip-side of central enforcement is central revocation, including by proactive actions begun in the UPC central division, meaning that what would otherwise have been a family of EPs may be revoked in one case.

No. The rules state that actions can be commenced taking into account where defendants are domiciled and where infringing acts take place. In the case of groups of companies, often many different subsidiaries may be involved in alleged infringing activities, and infringement may be widespread. The first instance organisation of the UPC is complex with multiple local and possibly regional divisions, and there are likely to be over a dozen potential venues in which most actions may be commenced, with the choice lying with the patentee. Hence, you might potentially be sued in almost any division of the UPC, but whichever division is used, its decisions have the same pan-European effect.

Sometimes, but not always. The usual rule is that the case will be heard in a local language of local and regional divisions, and in the case of the central division in the language of the patent. The claimant will have initial control as to which language accepted by the division the proceedings are commenced in (subject potentially to an application from the defendant or the Court itself deciding to the contrary). Most (and possibly all) divisions will offer English as an option, and the use of English is likely to dominate for practical reasons, most notably because every judicial panel in the UPC will include different nationalities and the most likely common language between these judges may well be English.

If your licence allows this, then yes you can sue. This is so even if the licence is non-exclusive. The patentee will then have a choice as to whether to join in the proceedings or not.

Yes. It is open to a claimant to conduct a saisie anywhere in the UPC territory and then decide if it wants to sue. Hence you should be aware of this possibility if you have aggressive competitors.

It is right that the UPC will have wide powers to grant preliminary injunctions. Those applications made without notice should be rare, but you can try to prevent this happening to you by filing a “Protective Letter” with the UPC Registry in Luxembourg (as is currently possible in Germany using a Schutzschrift). This procedure effectively asks the Court to inform you of any applications for injunctions to enable you to make representations to the Court before it grants any relief.

No. The two jurisdictions are parallel and complementary, and the start of the UPC will have no effect on existing oppositions or ones to be started in the future. However, it is possible to foresee oppositions becoming somewhat less common in the long term as the UPC will eventually be able to revoke patents designating most important territories and is not subject to the 9 month post-grant opposition window at the EPO.