Unitary Patent & Unified Patent Court

An introduction to the Unitary Patent and the Unified Patent Court

AA Thornton IP LLP combines the vast experience of its highly rated patent attorneys with a high-performing IP litigation team, and is helping clients navigate the new options provided by the Unified Patent Court and Unitary Patent. A basic introduction is provided below.

We welcome UPC and UP enquiries via email to upc@aathornton.com or via your usual AA Thornton contacts.

AA Thornton IP LLP was ranked by Legal500 as a “Top Tier” patent firm in 2021 and 2022. The patent attorney teams are led by Adrian Bennett, Mike Jennings and Craig Turner. Our IP litigation team is led by Geoff Hussey  and Daniel Byrne.

Legal500 testimonials:

“The ‘excellent’ A.A. Thornton & Co. ‘goes the extra mile to provide outstanding customer service’ and has expertise in both contentious and non-contentious matters.”

“The team at AA Thornton provides an ‘overall level of service that is top class’, with good industry knowledge.”

“AA Thornton maintains its position among the elite patent practices in the nation, largely based on its frequent successful representation of individuals, academic institutions, SMEs and multinational corporations.”

Recent progress towards the start of Europe’s Unified Patent Court and Unitary Patent

As has been widely reported, there will soon be significant changes to Europe’s patent system, with a new specialist patent court system (the Unified Patent Court or UPC) and a new option for unitary patent protection covering many of the states of the European Union.

The UPC is expected to start handling patent infringement and revocation actions from 1 June 2023. This is a delay from the previous planned start date of 1 April 2023.

We are continuing to monitor developments as we get closer to the opening of the UPC and close to the European Patent Office (EPO) accepting requests for unitary protection.

The following recent milestones deserve to be mentioned here.

Recommendations

We recommend that all owners of unexpired European patents (or their patent portfolio managers) take the following actions actions by the end of February 2023.

  1. Identify European patents and pending applications that may need to be opted out of the UPC.
  2. Check ownership of each European patent and application that may be opted out, including checking this for each contracting state of the European Patent Convention in which the European patent remains in force or which was designated in an application that is still pending (not only UPC states), since opt outs can only be registered at the request of all of the owners of the patent.
  3. Check any licence obligations that relate to jurisdiction.
  4. Make a conscious decision regarding which European patents (and applications) should be within the jurisdiction of the UPC and which should be “opted out” of the jurisdiction of the UPC, and instruct a reliable IP services provider to handle the registration of opt outs when this becomes possible in 2023.

Additionally, applicants of European patent applications that have been approved for grant by the EPO should consider whether to request delayed grant and unitary effect (this will only be an urgent consideration for patent applications that are approved for grant in 2022 and early 2023).

Please contact AA Thornton’s team of European Patent Attorneys and IP litigation experts if you have any questions regarding:

  • The Unified Patent Court of the Unitary Patent, and their relevance to your business;
  • The option to protect some or all of your existing European patents from revocation in the new court, by applying to opt them out of the jurisdiction of the UPC;
  • Withdrawal of opt outs;
  • Patent enforcement in the new court; and
  • Applying for revocation in the new court.

We will be happy to discuss which options are worth considering for your business.

We will continue monitoring legal developments and we will update our website when there are significant UPC and UP updates during 2022 and 2023. You can also expect frequent updates to the UPC website in the “sprint finish” towards 1 June 2023.

AA Thornton IP LLP – 5 December 2022

Unitary Patent (UP)

The unitary patent is the first piece of the EU patent package. It was established by two Regulations which entered into force on 20 January 2013 and which will be applicable from the date of the entry into force of the Agreement on a Unified Patent Court. This is now expected to be on 1 June 2023. Applicants will have the option to obtain a UP via a conventional European patent application filed at the European Patent Office (EPO). At the grant stage, applicants will have the option to gain a single ‘European patent with unitary effect’ covering certain EU states which are participating in the UP system, in addition to the present bundle of national patents which is obtained when validating a conventional European patent.

Find out more.

Unified Patent Court (UPC)

The European Union has worked for several years on the establishment of a common patent court which will be created on the basis of an international treaty. The UPC Agreement – which is the second piece of the EU patent package – was signed on 19 February 2013 and will enter into force four months after a minimum of 13 states (including France, Germany and Italy) have completed the ratification process.

As of November 2022, 16 states including France and Italy have completed their ratification. The date on which the UPC Agreement enters into force will therefore be determined by the date on which the last mandatory country, Germany, deposits its instrument of ratification, which is expected to take place in February 2023 triggering a start date of 1 June 2023.

Find out more.