We are pleased to present our new series of articles dedicated to the Unified Patent Court.
One year after its entry into force, it is the ideal time to investigate – also in light of the first decisions on the merits issued in recent months – how this innovative Court is impacting the European patent protection landscape.
Through this series of articles, we will seek to provide a clear overview of the functioning and dynamics of this new Court, analyzing the potential implications for the future of pan-European industrial property.
Whether you are an industry expert or simply a patent owner eager to have a comprehensive framework on how to best protect your IP rights, our UPC Series is for you!
The Unified Patent Court (UPC) and patents with unitary effect
The Unified Patent Court (UPC) is a supranational court, established by the Agreement on a Unified Patent Court (UPC Agreement) and operational since June 1, 2023.
Currently, 18 Member States participate, specifically: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden and, as of September 1, 2024, Romania.
The objective, however, is to reach 24 Member States with the ratification of the UPC Agreement by Cyprus, the Czech Republic, Greece, Hungary, Ireland, and Slovakia.
The Unified Patent Court has two instances:
- a Court of First Instance with a decentralized structure, consisting of 13 local divisions and one regional division, as well as a central division with offices in Paris, Munich and, as of June 2024, Milan;
- a Court of Appeal, based in Luxembourg.
Pursuant to Art. 24 of the UPC Agreement, cases submitted to the UPC must be decided by applying:
- European Union law;
- the UPC Agreement;
- the European Patent Convention;
- other international patent agreements binding on the contracting Member States (e.g., TRIPS);
- national law applicable on the basis of European private international law rules.
In light of this, the UPC may refer questions regarding the interpretation of EU law to the Court of Justice of the European Union.
The UPC has exclusive jurisdiction over unitary patents, unless the proprietor takes steps to exclude the patent from the jurisdiction of said court by requesting a so-called opt-out.
The unitary patent consists of a patent with single validity in all 18 signatory countries of the UPC Agreement. To obtain it, the same procedures provided for "classic" European patents must be followed until the time of grant: after that moment, the proprietor has one month to request unitary effect.
The UPC also has jurisdiction over "classic" European patents, i.e., those patents granted by the European Patent Office (EPO) and individually validated in the countries of interest. Indeed, with the commencement of the UPC's operations, a 7-year transitional period began during which the UPC and national courts have concurrent jurisdiction over classic European patents. Therefore, proprietors of such patents can decide to enforce them through a single action before the UPC, or individually before the respective national courts (such as the specialized sections of Italian courts governed by the Codice della Proprietà Industriale [Industrial Property Code]).
At the end of the transitional period, the UPC will have exclusive jurisdiction, even for classic European patents, in all European Union Member States participating in the Agreement.
The concentration of actions relating to a unitary patent in a single forum has the primary advantage of allowing the proprietor of a European patent to combat infringements of their IP rights with a single judicial initiative with effects in all 18 Member States, thus avoiding the multiplication of parallel disputes over the same patent and ensuring the harmonization of decisions.
Furthermore, this entails an undeniable saving in terms of time and money, accentuated by the speed of proceedings before the UPC. Indeed, the Rules of Procedure provide for a timeline of 12-14 months for the issuance of first-instance decisions; timelines that – at the moment – appear to have been largely respected by the Court.