Unified Patent Court and Unified European Patent

Unified Patent Court and Unified EU Patent

From June 1, 2023, pursuant to the Regulation on the Unified Patent Court (2013/C 175/01), the Unified Patent Court (Unified Patent Court, hereinafter: UPC, JSP) begins its operation, which in the future will be the court exclusively competent in scope of European patents and NEW European patents with unitary effect in all EU Member States that have joined the Unified Patent Court Agreement.

From the moment UPC commences its operations, a transition period will apply for 7 years (with the possibility of extension for further years).

This means that during the transitional period, actions for infringement or invalidation of classic European patents (i.e. without unitary effect) or for infringement or invalidation of a supplementary protection certificate (SPC) can still be brought before national courts, as is currently the case.

What does the Unified Patent Court mean for Polish applicants?

For Polish applicants, it is important that although Poland has not joined the Agreement on the Unified Patent Court (it has not become part of the EU court system), the entry into force of the UPC will be of great importance for Polish applicants who may participate in the procedure. the so-called Unified Patent, especially if they already have patents granted by the EPO, they may be sued before the UPC.

As of June 1, 2023, the Unified Patent Court will have competence in the countries belonging to the UPCA, not only in relation to Unitary Patents, but also all European patents granted by the EPO, i.e. those that may be granted in the future, as well as those that are already validated.

As a result, from June 1, anyone in the countries belonging to the UPCA will be able to initiate proceedings regarding a given European patent (its invalidation, infringement) without the knowledge of the patent owner, not only before the national courts of these countries, as was the case so far, but also before Unified Patent Court.

Costs of proceedings before the Unified Patent Court

The costs of proceedings before the Unified Patent Court are important, and for basic cases they are as follows:

fixed costs:
11,000 euros – infringement case
EUR 20,000 – patent invalidation case;
variable costs (depending on the value of the dispute),

and, importantly, these costs are usually borne by the losing party.

Source: https://www.unified-patent-court.org/en/registry/court-fees

Opt-out, i.e. the ability to „exit” JSP [IMPORTANT]

In order to exclude the proceedings of currently held rights before the Unified Patent Court, it is possible to submit an application directly to the Register of this Court for the so-called by May 31, 2023. withdrawal from the competences of the JSP, the so-called „opt-out”, which, provided it is performed correctly (which, unfortunately, can be seen when such proceedings are initiated), will protect the applicants from proceedings before the JSP.

Any person authorized by the applicant may submit an opt-out. Unfortunately, as mentioned above, until the case is brought before the JSP, it is not possible to check the correctness of the opt-out adopted by the JSP Registry.

Opt-outs will also be possible during the above-mentioned transitional period of at least 7 years (applies to applications made after June 1, 2023).

What does the grant of a patent with unitary effect mean?

A patent with unitary effect, as in the case of „classic” European patents, will be granted by the European Patent Office, but will be valid only in the indicated Member States of the European Union (EU) that have joined the Unified Patent Court Agreement.

Kraje, w których będzie obowiązywać patent europejski o jednolitym skutku. Źródło: https://www.unified-patent-court.org/en/organisation/upc-member-states

Currently, these are 17 countries, namely: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. For other EU Member States and European Patent Convention (EPC) countries, European patent validation will continue to apply (e.g. Poland, Spain, Switzerland).

Fees for a patent with unitary effect

The application for registration of the unitary effect of a European patent is free of charge and must be submitted no later than one month from the date of publication of information on the grant of the patent in the European Patent Bulletin, which means that in the case of countries that have joined the unitary patent system, one registration will be valid. and one fee.

What is important from the perspective of the Polish applicant is the fact that it is the applicant who will decide whether his invention will be protected as the so-called a „classic” European patent subject to validation or as a European patent with unitary effect, as schematically shown below:

If you have any questions, doubts or would like to undergo legal and patent consultations, please contact our patent office.

Prepared on the basis of materials and training organized by the Polish Chamber of Patent Attorneys