We previously provided an overview of the Unitary Patent as an option to replace the national validation process of a granted Europe patent for participating member states, as well as some commentary on the utilization of the Unitary Patent since its June 1, 2023 inception. In this post, the role of the Unified Patent Court (UPC) and its utilization thus far will be addressed.
Role of the Unified Patent Court
The UPC, like the Unitary Patent, was created as of June 1, 2023. It is an international patent court with EU member states as participants to address both infringement actions and validity actions of both Unitary Patents and traditional European patents. The UPC was created to provide dedicated judges with expertise in patent law. Its goal was also to provide cost and efficiency improvements by providing pan-European patent litigation for participating member states through a single action.
The UPC is made up of multiple courts: Court of First Instance, a Court of Appeal and a Registry (which is effectively an organizational arm of the UPC). The Court of First Instance has a central division in Paris and Munich, as well as local and regional divisions throughout Europe. The Court of Appeal and Registry are in Luxembourg.
The UPC has jurisdiction over both Unitary Patents and traditional European patents. There is an option for traditional European patents to "Opt -Out" of the UPC's jurisdiction in a filing with the Registry after publication of a European patent application. However this only applies to traditional (country-by-country) European patent; it is not an option for Unitary Patents. Notably, such an Opt-Out of the UPC must be made before an action is brought to the UPC.
The UPC provides parties with a result that applies across all participating member states. The intent is a more efficient, cost-effective and consistent system for resolution of patent disputes in Europe. It is not hard to envision how this is an efficiency improvement, where a single decision of infringement can apply for all participating member states (currently 18 countries are members, with the U.K. notable absent, and with a goal of 25 European countries), when comparing to the prior model of requiring infringement and enforcement decisions on a country-by-country basis.
Overall, how has the first two years faired in terms of providing more cost-effective routes to obtain infringement decisions and invalidity decisions? There have been 633 actions filed with the UPC through the end of 2024. Of particular note is the efficiency achieved thus far, that the first instance proceedings on the merits are being concluded within 1 year from initiation of an action. German and English are the leading languages for proceedings. The pace of filings has outpaced expectations and this appears to be enabling the court system to scale up at a faster pace. This is all indicative of patent owners throughout Europe having a strong confidence level for this court system, still in its infancy.
It appears the UPC is steadily becoming a replacement as a first choice for patent owners instead of the traditional favorite of German national courts, particularly with European patent owners. The primary factor in favor of the UPC is the efficiency of centralized protection and litigation. The primary risk of using the UPC is the risk of centralized revocation. These two – benefit and risk – go hand in hand. It appears for most patent owners, the benefits may outweigh the risks.
There can be a lot of factors to consider as a patent owner in deciding whether to utilize these cost and efficiency tools now available through both the Unitary Patent and the UPC. Working with patent counsel familiar with the systems and having counterpart European patent counsel is essential to ensure your choices align with IP strategies and business objectives specific to Europe. Therefore, if you are considering European patent protection it will be worthwhile to consult with your IP counsel to obtain cost estimates to compare the Unitary Patent with traditional European patent protection, as well as evaluate the European market strategies with the benefit of centralized enforcement (and the risk of centralized revocation).
Additional information on the Unified Patent Court is available from the EPO here https://www.unified-patent-court.org/en. Statistics referred to herein on the utilization of the Unified Patent Court in the Annual Report is available here https://www.unified-patent-court.org/en/news/unified-patent-court-published-its-first-annual-report.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
