2. How much will a Unitary Patent cost?
- In terms of the overall costs, a Unitary Patent will be less expensive than a European Patent validated and maintained in four Member States.
- The costs of the examination phase of a Unitary Patent before the European Patent Office will be the same as those of a European Patent, but translation costs will be lower because only one additional translation will be required for Unitary Patents.
- To maintain a Unitary Patent, the patent proprietor will also have to pay annual renewal fees. The renewal fees for Unitary Patents have been set based on the renewal fees currently paid for the countries in which European Patents are most frequently validated today. They range from 35 EUR in the 2nd year to 4 855 EUR in the 20th year. Compared to the costs of a classic European Patent validated and maintained in all 25 Member States participating in the Unitary Patent system, the renewal fees for a unitary patent amount to only a fraction (e.g., less than a quarter in the 20th year). However, for European Patents designating only a limited number of Member States (typically less than four states), the renewal fees of a European Patent may be cheaper.
- Read more on the EPO’s website.
3. What is the structure of the Unified Patent Court?
- A Court of First Instance, which will include:
- Local and regional divisions (which can be set up on request by one or more contracting Member States: one division for every hundred patent cases commenced in the contracting Member State per year).
- A Court of Appeal in Luxembourg.
- A Patent Mediation and Arbitration Centre (in Ljubljana and Lisbon).
- A Training Facility for judges (in Budapest).
- Note that the Court of Justice of the European Union will be able to receive requests for preliminary rulings on matters of European Union law from the Court of First Instance and the Court of Appeal. Its role will be to ensure the correct and uniform interpretation of Union law, and its decisions will be binding on the UPC.
5. What is the jurisdiction of the UPC?
General jurisdiction of the UPC
The UPC will have exclusive jurisdiction over cases regarding:
- Infringement and revocation actions concerning Unitary Patents cannot be brought before national courts.
- European Patents (except if the proprietor has opted-out: see FAQ 7)
- However, during the transitional period (7 years from the date of entry into force of the UPC Agreement, extendable by an additional 7 years), the UPC and national courts will have a shared jurisdiction to hear cases regarding European Patents (except if the proprietor has opted-out).
- Supplementary Protection Certificates (SPCs) issued for a product protected by a Unitary Patent or a European Patent (except if the proprietor of the patent has opted-out).
The UPC will be entitled to:
- Grant provisional or permanent injunctions applicable in all Unified Patent Court Contracting Member States.
- Revoke Unitary Patents and/or European Patents with effect in all Unified Patent Court Contracting Member States.
Jurisdiction of the divisions of the UPC (Forum Shopping)
- Local or regional division of the place of infringement, or
- Local or regional division of the defendant’s domicile.
Revocation and declaration of non-infringement
- Local or regional division if an action for infringement between the same parties and relating to the same patent is pending before this division.
- Local or regional division of the place of infringement, or
- If an action for infringement is brought before a division, any other action between the same parties relating to the same patent shall be brought before the same division.
- The parties may agree to bring an action before the division of their choice, including the central division.
- Special regime applicable to revocation claims in case of pending infringement action before a regional or local division between the same parties and relating to the same patent.
- 3 options for the regional or local division:
1. Proceed with both the infringement and revocation,
2. Refer the whole case to the central division (with parties’ approval),
3. Refer the revocation claim to the central division and:
a. Stay the infringement action, or
b. Proceed with the infringement action.
7. Is it possible to opt-out from the jurisdiction of the UPC?
For Unitary Patents: No
- UPC exclusive jurisdiction is mandatory.
For European Patents: Yes
- European Patent proprietors may opt-out from the jurisdiction of the UPC, on a patent-by-patent basis, in which case national courts remain (exclusively) competent for the lifetime of the patent.
- Opt-out will be admissible from the entry into force of the protocol for a provisional application of the UPC Agreement (see FAQ 11 and below) and until the expiration of a transitional period of 7 years from the date of entry into force of the UPC Agreement and as long as no action has been brought before the UPC.
- Locked-in situation: once an action (whether pending or concluded) has been brought before the UPC, the opt-out is no longer admissible.
- The opt-out can be withdrawn as long as no action has been brought before a national court.
- Locked-out situation: Once an action has been brought before a national court, it is no longer possible to withdraw the opt-out.
Sunrise Period: European Patent proprietors will be entitled to file an early opt-out declaration before the Court opens
- The preparatory Committee plans the sunrise period to start as soon as all required member states have ratified the UPC Agreement.
8. What is the timeline for proceedings before the UPC?
Infringement Action Timeline (if no counterclaim for revocation)
Infringement Action Timeline (with counterclaim for revocation and no bifurcation)
10. What are the court costs for UPC proceedings?
On 26 February 2016, the UPC Preparatory Committee announced that it had agreed the rules on court fees, “subject to legal scrubbing”:
- Infringement and revocation actions (or counterclaims) before the UPC require the payment of court fees, consisting of a fixed fee and, for certain claims, an additional value-based fee.
- The fixed fee for claims relating to infringement (infringement action, counterclaim for infringement, action for declaration of non-infringement, action for compensation for licence of rights) is €11,000 and an additional fixed fee of €3,000 is due for applications to determine damages.
- In respect of the above actions that exceed a value of €50,000, additional value based fees will be due, ranging from €2,500 (for values up to and including €750,000) to €325,000 (for values exceeding €50,000,000).
- A fixed fee of €20,000 is due for an independent revocation action.
- For counterclaims for revocation, the fee will be the same as the fee of the related infringement action, subject to a €20,000 cap.
- Additional fees are due for appeal proceedings.
- Small and micro-enterprises are entitled to pay only 60% of the respective fee.
11. Timeline: When will the system go live?
While Germany can theoretically deposit its ratification bill soon, there is currently no clear timeline for the UPC system to go live following the UK’s withdrawal. According to the UPC’s website
, it is estimated that the UPC will start operations around mid-2022. Other estimates are more cautious.
12. What happens now after the development in Germany?
While the dismissal of the constitutional complaints in Germany allows the German ratification to be deposited, there are still numerous things to sort out. It is, for example, still not clear where to move the Central Division that was originally meant for London.
13. Brexit – What now?
On 29 March 2017, the UK gave formal notification of its intention to leave the European Union. On 31 December 2020, the transition period ended, and the United Kingdom left the EU single market and custom union.
The UPC is not an EU body. However, the UK has chosen to withdraw from the system stating the potential involvement of the CJEU as a reason. It withdrew its ratification on 20 July 2020. As one of the three Central Divisions has originally been allocated to London, it remains to be seen where this division for pharmaceutical division will be seated.
We are well placed to assist with any Brexit-related IP (including UPC) related questions and concerns you may have in the coming weeks and months. We encourage you to raise your questions with any of the key contacts listed below or any of your usual Linklaters contacts.
We have also gathered insights and briefings to help you consider, and deal with, the wider implications of Brexit in a dedicated microsite.