What you should know about the UPC

The new EU patent system  comprising the Unitary Patent  and Unified Patent Court, brings comprehensive and fundamental changes. In addition to the  nationally prosecuted and granted patents as well as national parts of the granted European “bundle” patent, Patentees will have the further option of a Unitary Patent: As the name implies, this unitary patent affords the patentee unitary patent protection across each of the participating EU states. 

The UPC is a new court in each of the participating member states with competence for matters of enforcement of unitary patents.  The UPC will render decisions on matters of infringement and on the validity and legal status of the respective patent in suit: all in a single proceedings. This means that costly and cumbersome parallel actions before multiple national courts are no longer necessary meaning that legal certainty for Patentees and the public is enhanced. National courts will, of course, remain responsible for post-grant proceedings with respect to national patents. The UPC has numerous Local Divisions across the EU with four courts in Germany: Düsseldorf, Hamburg, Mannheim and Munich. The central division is split across  Paris and Munich. In June 2024 a third location of the central division will be established in Milan. The UPC Court of Appeal is located in Luxembourg.

Companies must evaluate their strategies for filing and enforcing patents and adapt them as necessary. Patent proprietors and applicants must decide between the classically validated European patents, national patents and the patent with unitary effect (unitary patent). Unitary protection may be supplemented with further national parts of the granted European patent outside the territory of the UPC member states. When choosing a unitary patent, protection is automatic across the whole UPC and protection need not be requested individually for each participating member state. In many situations, unitary patent protection saves costs, not only on the need for translations but also with the annual maintenance fees which must be paid. Our cost calculator can be found HERE. When it comes to alleging infringement, patents may be enforced in all UPC member states in parallel via a single court action, this improving the speed and ease for patentees. The final UPC court judgements are then valid transnationally across all UPC states. Whilst there are clear benefits to enforcing your case before the UPC, there is a potentially higher risk for the patent proprietor: unitary patents and European Patents for which no opt-out is filed, can be invalidated by a single nullity action before the UPC. Again, this decision is valid across all UPC member states in which the patent is in force. Prior to the UPC, patents had to be enforced and contested individually in each relevant country And in separate actions.

The UPC constitutes a paradigm shift in patent law in Europe and this change and poses major challenges for IP specialist attorneys.: Not only is it necessary for attorneys to delve deeply into the specifics of the new EU patent system and rapidly develop expertise, it is also necessary for IP attorney offices to network internationally and strengthen partnerships with offices from other member states.: Whilst it may be true that there is a unitary legal system, it is expected that the proceedings before local divisions in each member state will be coloured by the local judges. Each country-specific legal system can encroach into the application of the law at the UPC system with the legal culture in different member states surely having an impact. At the very least, the particular language of the country may play a part in a successful action. A major challenge for IP attorney offices will also be the significant time pressure in UPC action. At least initially, only larger offices with comprehensive technical and legal expertise will have enough experts to be in a position to undertake UPC proceedings – smaller offices will simply struggle to cope with the workload.

Meissner Bolte has been preparing for the last decade  for the new unitary patent system in Europe. Through numerous mock trials, both internally and externally with EU based IP judges, as well as extensive internal training, the attorneys at Meissner Bolte have a head start on what patentees will need for a successful UPC action. A number of our attorneys have been actively making presentations on the new court, e.g. Kay Rupprecht at the Polytechnic University of Milan. 

Meissner Bolte is one of the founding members of the  EPLN (European Patent Litigators Network). Meissner Bolte together with their partner offices from key UPC member states are combining their expertise in European patent defence and enforcement. In combination, the offices offer extensive legal and technical specialist knowledge relating to all matters of intellectual property – both nationally and internationally – advising their clients in a cost-effective manner. As a direct result of the high time pressure built into the UPC, it is vital to respond rapidly and completely in all actions. With the EPLN: strategies and budgets are agreed in advance so that in the case of an action, this can be handled effectively and very rapidly. The EPLN also offers all participating offices direct access to country-specific knowhow and experience with the relevant local judges who will be sitting in the UPC.

Must patents be transferred into the new system? What should you do if the previous system was ideal for your own patent? Can the patent now be attacked by your competition? Many questions go hand in hand with the UPC and these require individual, often case-by-case, answers. Detailed information here.