Frequently asked questions regarding the Unified Patent Court (UPC)

The Unified Patent Court (UPC) is a European court that opened in June 2023 and handles actions concerning the infringement and validity of European patents in those EU Member States that have agreed to participate (referred to as “UPC Member States”). There are currently 18 UPC Member States. For the first time in Europe, the UPC offers a new, centralised procedure for infringement and validity actions, i.e., where the court has jurisdiction to rule on infringement and validity for all UPC Member States at one time. This could be less costly than taking separate actions in multiple states, but also runs the risk of revocation of the patent for all UPC Member States through a single action.

A UPC Member State is a state that has both signed and ratified the UPC Agreement (UPCA). It is necessary to be an EU Member State to be a UPC Member State. The 18 current UPC Member States are:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden.

The grant of European patents is governed by the European Patent Office (EPO) in accordance with the European Patent Convention (EPC). There are 39 contracting states to the EPC.  Of these 39 states, 27 are also EU Member States and 12 are non-EU Member States. There are therefore 21 EPC contracting states that are not UPC Member States and, of those 21 states, 9 are EU Member States and 12 are non-EU Member States.

The following EPC states are not UPC Member States:

Albania, Croatia, Cyprus, Czech Republic, Greece, Hungary, Iceland, Ireland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Poland, San Marino, Serbia, Slovakia, Spain, Switzerland, Turkey and the UK.

Of these, six are EU Member States that have signed, but not ratified, the UPC Agreement, and may decide to participate later. These are sometimes referred to as UPCA Signatory States.  These are:

Cyprus, Czech Republic, Greece, Hungary, Ireland and Slovakia.

Three EU Member States, Croatia, Spain and Poland, do not intend to participate in the UPC and have neither signed nor ratified the UPC Agreement.

The 12 non-EU states that are contracting states of the EPC cannot participate in the UPC. These are:

Iceland, Norway, Turkey, Switzerland, Liechtenstein, San Marino, Monaco, Serbia, Albania, North Macedonia, Montenegro and the UK.

The process to obtain a European patent is not changed by the UPC. European patents will continue to be examined and granted by the EPO, based on a single European patent application.

After grant, it is necessary to choose in which of the 39 EPC contracting states protection for the European patent is to be obtained. The Unitary Patent (UP) launched alongside the UPC so that, after grant, there are now two routes to obtaining protection in EPC contracting states:

1) The “classical” national validation route that involves separately requesting validation in one or more of the 39 contracting states. Renewal fees then need to be paid for each nationally validated patent separately.

2) The UP route that involves a single request to cover all 18 UPC Member States, thus avoiding separate validations in each of those states. A single set of renewal fees is payable for the UP.

It is therefore possible to obtain protection in UPC Member States through either national validation or through the UP. It is only possible to obtain protection in those EPC contracting states that are not also UPC Member States through national validations.

It is also possible to use a combination of UP and national validation, for example if protection in some non-UPC Member States is desired alongside a UP.

During an initial transitional period of seven years from when the UPC system commenced (June 2023), infringement and validity actions for European patents nationally validated in UPC Member States can be handled by either:

• The national court in each of those states, or
• The UPC

In other words, for those European patents that have been nationally validated in UPC Member States, the patent owner or a third party has the right to initiate an action in either the relevant national court, or the UPC in respect of those patents.

During the transitional period, the patent owner can opt out from the UPC any European patent that is nationally validated in one or more UPC Member State(s). It is not possible to opt out a UP from the UPC; i.e. any infringement or validity actions brought in respect of a UP will always be heard before the UPC.

The initial transitional period may be extended by a further seven years (i.e. until 2037), but it is not yet known whether this extension will be exercised or not.

During the transitional period, a patent owner can avoid infringement or validity actions before the UPC for any European patent nationally validated in one or more UPC Member State(s), by opting from the UPC. Once a European patent has been opted out of the UPC, no infringement or validity action can be initiated at the UPC by the patent owner or a third party in respect of that patent unless the opt out is withdrawn. In other words, infringement or validity actions will be handled by the relevant national courts for that patent.

It is not possible to opt out a Unitary Patent (UP) and so infringement or validity actions will be handled only by the UPC for a UP.

For more information on the opt out process, see our FAQ here.

As detailed above, there are several EPC contracting states that are not UPC Member States. There is no change for these states. Infringement and validity actions for European patents validated in these states will continue to be handled by the appropriate national court.

However, note should be taken of the Court of Justice of the European Union’s (CJEU’s) decision in BSH Hausgeräte GmbH v Electrolux AB, which ruled that when an action is brought in an EU Member State against a defendant in the court of the defendant’s domicile, the court of that Member State is able to rule on acts of infringement occurring in non-Member States. The UPC is deemed to be a Member State court, and so this ruling means that in some cases the UPC has jurisdiction to rule on acts of infringement occurring in other non-Member States, such as the UK. In other words, the UPC can rule on acts of infringement covered by a European patent but occurring in states that are not part of the UPC system. In these circumstances, the UPC will assess the validity of the patent in the non-UPC state, but only as a pre-requisite for a finding of infringement.  Any finding by the UPC that the patent in the non-UPC state is invalid only has inter-partes effect – that is, it does not cause the patent in that state to be revoked. Such revocation can only be done by the courts or patent offices of that state.

The UPC can make decisions in relation to infringement, validity and other similar actions for the following types of patents:

• All existing granted European patents that have been nationally validated and remain in force in one or more UPC Member State(s) – unless opted out.
• All future European patents as they grant and are nationally validated in one or more UPC Member State(s) – unless opted out.
• All future European patents as they grant and are validated by requesting a Unitary Patent – it is not possible to opt a UP out of the UPC.
• Any supplementary protection certificates (SPCs) based on the above European patents. The UPC can therefore make decisions in relation to infringement, validity and other related actions for these patents and SPCs.

Any supplementary patent certificates (SPCs) based on the above European patents will also be covered. The UPC can thus make decisions in relation to infringement, validity and other related actions for these patents and SPCs.