An Enhanced European Patent System

An Enhanced European

Patent System

The Select Committee

The Preparatory Committee

An Enhanced

European Patent

System

In December 2012 the Council of the European Union and

the European Parliament agreed on two regulations1 laying

the foundation for unitary patent protection in the EU.

Shortly afterwards, in February 2013, 25 EU Member States

signed the Agreement on a Uniﬁed Patent Court (UPC).

This committed the Contracting Member States to establish

a Court common to them with exclusive jurisdiction for

future European patents with unitary eﬀect (Unitary Patent

Protection, UPP) as well as for European patents validated in

one or several of the contracting states – “classical” European

patents.

The aim of the reform is to oﬀer business an alternative by

simplifying the existing system and support a cost eﬀective

route to patent protection and dispute settlement. It will

still be possible to use the national route for those preferring

to seek protection in individual Member States and to

validate a European patent in one or several Member States.

It will also be possible to combine the new system with the

1) Regulation (EU) No 1257/2012 of the European Parliament and of the

Council of 17 December 2012 implementing enhanced cooperation in the

area of the creation of unitary patent protection, Council Regulation (EU)

No 1260/2012 implementing enhanced cooperation in the area of the crea-

tion of unitary patent protection with regard to the applicable translation

arrangements.

old one and have a European Patent with unitary eﬀect and

in addition validate the patent as a classical European Patent

in other

EPC Contracting States. Consequently there will be

three routes to patent protection in Europe in the future.

Innovation

NPO NPO

NPO

EPO

NPO NPO NPO

EPO

National Patent European Patent European Patent with

Unitary Effect

NPO = National Patent Office EPO = European Patent Office

The Unitary Patent Protection (

UPP) will make it possible

to get unitary eﬀect for a European patent in 25 EU Member

States by one request.

The pre-grant phase

The UPP builds on the European Patent Convention (EPC).

This means that nothing changes in the pre-grant phase.

The applicant applies for a European patent at the European

Patent Oﬃce (EPO). The EPO handles the application in

accordance with the EPC and, if all relevant criteria are met,

eventually grants a European patent.

How to get unitary effect

The proprietor of a European patent will, after grant, have the

opportunity to ﬁle a request for unitary eﬀect. If the formal

requirements are met the European patent shall then beneﬁt

from unitary eﬀect – uniform protection and equal eﬀect –

in all the participating Member States. Consequently, by the

means of one single request, the proprietor of a European

patent will be able to get patent protection in 25 Member

States of the European Union.

The Unitary

Patent Protection

A European patent

in 25 EU Member

States by one

request.

This should be compared with the “classical” European

patent where the patent holder needs to validate the

patent in each Member State where protection is required.

Diﬀerent validation requirements apply

in the Member States. In several Member

States the patent holder must ﬁle a

translation of the European patent into

the oﬃcial language of the state where

protection is requested, pay a publication

fee to the national patent oﬃce and within prescribed

periods of time comply with various formal requirements

relating in particular to the number of copies to be ﬁled and

the use of speciﬁc forms. Once the patent is validated the

patent holder must pay renewal fees in every Member State

where the patent is valid.

The formal requirements for UPP

In order to gain Unitary Patent Protection the European

patent must have been granted with the same set of claims

for all the participating Member States. All 25 Member

States need to be designated. Consequently, withdrawal

of designations and limitation of claims for certain of the

participating Member States need to be avoided since it

would prevent unitary eﬀect. In addition, the request for

unitary eﬀect shall be ﬁled at the EPO in the language of

proceedings within one month from the publication of the

mention of the grant in the European Patent Bulletin.

As from the date of application of the UPP regulations

there will be a transitional period of six to a maximum

of twelve years during which the patent holder will need

to ﬁle a translation of the patent speciﬁcation into one

additional language. If the patent is granted in German or

French the translation shall be into English. If the patent

is granted in English, the translation shall be into any other

oﬃcial language of the

EU at the choice of the patent holder.

These translations are for information purposes only and do

not have any legal eﬀect. After the transitional period no

translations will be required.

The geographical extension of the UPP

The geographical extension of the unitary patent protection

will eventually embrace all the EU Member States that are

contracting parties to the EPC and have joined the enhanced

cooperation in the area of the creation of unitary patent

protection – the participating Member States.

The unitary eﬀect of a European patent will cover the

territories of those Contracting Member States that have

ratiﬁed the UPC Agreement

at the date of the registration

of the unitary eﬀect of

the individual patent. The

geographical extension of

the unitary eﬀect for an

individual European patent

will remain ﬁxed and will

not be extended to those Contracting Member States that

ratify the Agreement after the registration. However once

all the Contracting Member States have ratiﬁed the UPC

Agreement, European patents registered thereafter will

enjoy unitary eﬀect in all participating Member States.

Currently Spain, Italy and Croatia are not participating in

The unitary effect of a

European patent will

cover the territories of

those Contracting Mem-

ber States that have rati-

ﬁed the UPC Agreement.

the

UPP. They might of course join. Poland is participating

in the UPP but has still not signed the UPC Agreement.

The proprietor of a European patent with unitary eﬀect

can choose to validate the patent as a classical European

patent also in the non-participating states; Spain, Italy and

Croatia and in those Contracting Member States that have

not yet acceded to the UPC Agreement at the given time.

Once all the participating Member States have acceded

to the UPC Agreement it will be possible to gain patent

protection in the entire EU via one request and a maximum

of three additional national validations. In addition it will

of course be possible to validate the same patent in the ten

Contracting States of the European Patent Organisation

that are not EU Member States. This is to be compared with

the current European system where the patent, in order to

gain the same level of protection, would have to go through

individual validation processes in 38 Member States with the

need to provide translations, publication fees and comply

with various formal requirements.

Compensation for translation costs

According to regulation (EU) No 1260/2012 a compensation

scheme will be available making it possible to receive

reimbursement for all translation costs up to a ceiling for

patent applications ﬁled at the EPO in one of the oﬃcial

languages of the Union that is not an oﬃcial language of the

EPO. The compensation scheme will be available only for

SMEs, natural persons, non-proﬁt organisations, universities

and public research organisations having their residence or

principal place of business within a Member State.

Renewal fees

The proprietor of a European patent with unitary eﬀect

will pay only one annual renewal fee. It shall be paid to the

European Patent Oﬃce. The level of the renewal fees will

be decided by the Select Committee established under the

European Patent Convention by the participating Member

States. The Select Committee will have to follow the

principles contained in the regulation (EU) 1257/2012. The

renewal fees shall be suﬃcient to

cover all costs associated with the

grant of the European patent and the

administration of the unitary patent

protection and ensure a balanced

budget of the EPO. The level of the

renewal fees shall be set, taking

into account, the situation of speciﬁc entities such as small

and medium-sized enterprises, with the aim of facilitating

innovation and fostering the competitiveness of European

businesses. The level of the renewal fees shall also reﬂect

the size of the market covered by the patent, the renewal

rate of current European patents and the number of requests

for unitary eﬀect. The fee level shall be similar to the level

of the national renewal fees for an average European patent

taking eﬀect in the participating Member States at the time

the level of the renewal fees is ﬁrst set.

The proprietor of a

European patent with

unitary effect will

pay only one annual

renewal fee.

The UPP or a classical European patent

The UPP and the UPC add other options to the patent system

in Europe. It doesn’t replace the already existing ones. The

new patent package will consequently provide users with

new choices. A choice between a classical European patent

and UPP will need to be made taking into consideration the

preferences of the individual patent holder on the diﬀerent

relevant aspects.

The costs for a classical European patent (costs for

validation and the cost of renewal fees in each Member

State where protection is required, including related

transactional costs) need to be compared with the costs for

UPP (no validation costs except the cost for one translation

during the transitional period, a single renewal fee).

It will be for the patent holder to consider if there is a

need for broad geographical coverage or if protection in a

few Member States is enough. Consideration should be made

as to whether there is a need for protection at the external

borders of the EU against imports from third countries via

the EU customs regulation. It is diﬃcult to prevent the

further distribution of a certain product once it has entered

the Single Market.

In addition the patent holder needs to consider if the

patent should be subject to the exclusive jurisdiction of

the UPC or if it is better to use national courts with a more

limited geographical jurisdiction. The exclusive jurisdiction

is mandatory for UPP and initially optional for the classical

European Patent (transitional period of seven years and opt-

out for patent holder). National patents will remain in the

jurisdiction of national courts.

The

UPC Agreement aims to establish a uniﬁed patent ju-

risdiction covering all the Contracting Member States that

have ratiﬁed the Agreement.

The nature of the UPC

The UPC will be a court common to the Contracting

Member States and thus be part of their judicial system.

The UPC will consist of a Court of First Instance, a Court of

Appeal and a Registry.

The Contracting Member States

Accession to the UPC Agreement is open to any Member

State of the European Union. The Agreement is not open

to states outside of the European Union. Up to date, all

European Union Member States except Spain, Poland and

Croatia have signed the Agreement.

The general competence of the UPC

The UPC will, as a general rule, have exclusive competence

in respect of civil litigation on matters relating to classical

The Uniﬁed

Patent Court

European patents, European patents with unitary eﬀect,

supplementary protection certiﬁcates issued for a product

covered by such a patent and European patent applications.

The

UPC’s rulings will have eﬀect in the territory of

those Contracting Member States having ratiﬁed the UPC

Agreement. The UPC will not have any competence with

regard to national patents or supplementary protection

certiﬁcates granted for a national patent.

The UPC will also have exclusive competence in respect of

actions concerning decisions of the European Patent Oﬃce

in carrying out the tasks of administering the UPP set out in

the UPP regulations.

Structure of the Uniﬁed Patent Court

Court of Appeal

(Luxembourg)

Local

division

Local

division

Regional

division

Regional

division

Central

division

ECJ

Questions for referral and

preliminary rulings on Union law

ECJ = Court of Justice of the European Union

The UPC Court of First Instance (UPC-CFI)

One Court

The UPC-CFI will be one court with several divisions. All

the panels will have a multinational composition and will

operate under the same Rules of Procedure. The decisions of

the UPC-CFI can be appealed to the UPC Court of Appeal.

The divisions

The UPC-CFI will have a central division as well as local and

regional divisions. The central division will be seated in Paris,

with sections in London and Munich dealing with cases

concerning speciﬁc patent classiﬁcations

(London: Human necessities, chemistry

and metallurgy, Munich: Mechanical

engineering, lighting, heating, weapons

and blasting). Every Contracting Member

State may request the UPC to set up, as part of the UPC-CFI,

up to four local divisions or a regional division together with

one or more other Contracting Member States.

Competence of the divisions

Actions for or relating to infringement, provisional and

protective measures and injunctions, damages or compensation

derived from provisional protection and/or prior use shall

be brought before the local/regional division where the

infringement has occurred; or where the defendant has

residence or place of business. In such a case the plaintiﬀ has

the choice between the division of the place of infringement

and the division of the residence or place of business of the

infringer. If the alleged infringement has occurred in the

The UPC-CFI will

be one court with

several divisions.

territories of several local or regional divisions of the

UPC-CFI

the plaintiﬀ will also have the possibility to choose between

diﬀerent divisions relating to the place of infringement. If

the defendant has no residence or place of business in one

of the Contracting Member States actions shall be brought

before the local/regional division where the infringement

has occurred or before the central division. If the concerned

Contracting Member State has no local/regional division

actions shall be brought before the central division.

Actions for revocation or non-infringement shall be brought

before the central division unless an action for infringement

between the same parties referring to the same patent

already has been brought before a local or regional division

in which circumstances these actions may only be brought

before the same local/regional division.

Actions concerning decisions of the EPO, when carrying

out administrative tasks regarding the UPP such as the

administration of requests for unitary eﬀect, the Register

for the UPP, the collection and administration of renewal

fees or the compliance with the transitional translation

requirements for the UPP, shall always be brought before

the central division.

Counterclaim for revocation

If an infringement action is initiated before a local or regional

division of the CFI and a counterclaim for revocation of

the patent is brought before the local or regional division

concerned, the UPC Agreement foresees diﬀerent scenarios:

y The local or regional division concerned may decide

to proceed both with the infringement action and the

counterclaim for revocation together;

y The local or regional division may alternatively decide

to refer the counterclaim for revocation for decision

to the central division and, depending on the circum-

stances of the case, either suspend or proceed with the

infringement action (bifurcation); or

y with the agreement of the parties, the local or regional

division concerned may also decide to refer both

the infringement action and the counterclaim for

revocation to the central division, where they will be

dealt with together.

The language of proceedings

In the CFI the main rule will be that the language of

proceedings is the oﬃcial language or one of the oﬃcial

languages of the Contracting Member State hosting the

local division or the oﬃcial

language(s) designated by the

Contracting Member States

sharing a regional division.

The language of proceedings in

the central division will be the

language in which the patent

was granted (language of the patent). However there are

exceptions making it possible for Contracting Member

States to designate one or more of the oﬃcial languages of

the EPO, i.e. English, German or French, in addition to or

instead of the oﬃcial language of the Member State(s) as the

language of proceedings of their local or regional division. It

will also be possible under certain conditions to change the

language of proceedings of the local or regional division, to

the language of the patent.

The language of pro-

ceedings in the central

division will be the

language in which the

patent was granted.

The Court of Appeal

The UPC Court of Appeal will have its seat in Luxembourg.

The Registry will be set up at the seat of the Court of

Appeal. All the panels of the Court of Appeal will have a

multinational composition and will operate under the Rules

of Procedure of the UPC. The language of proceedings before

the Court of Appeal will be the language of proceedings

before the Court of First Instance.

The role of the Court of Justice of the European

Union

The UPC will be a court common to the Contracting

Member States. It will therefore, as any national court,

be obliged to refer requests for preliminary rulings on the

interpretation and application of EU

law to the European Court of Justice in

accordance with Article 267 of the Treaty

on the Functioning of the European

Union.

Representation

Parties that litigate before the UPC shall be represented

by lawyers authorised to practice before a court of a

Contracting Member State or alternatively by a European

Patent Attorney who is entitled to practice before the EPO

and who has appropriate qualiﬁcations such as a European

Patent Litigation Certiﬁcate.

The UPC will be

a court common

to the Contracting

Member States.

The transitional period – Opt-out scheme and

choice of forum

In the UPC Agreement a transitional period is prescribed.

It only applies for classical European patents and not for

European Patents with unitary eﬀect. The transitional

period is seven years but may be prolonged up to a further

seven years on the basis of a broad consultation with the

users of the patent system and an opinion of the Court.

During the transitional period, actions for infringement

or for revocation concerning classical European patents or

for a supplementary protection certiﬁcate (SPC) issued for

a product protected by such a patent may still be brought

before national courts unless an action has already been

brought before the UPC.

In addition, during the transitional period, a proprietor of

– or an applicant for – a European patent granted or applied

for prior to the end of the transitional period or a SPC issued

for a product protected by such a patent will also have the

possibility to opt out the patent/application/SPC, from the

jurisdiction of the UPC unless an action has already been

brought before the UPC. To this end they shall notify their

opt-out to the Registry. The opt-out shall take eﬀect upon

its entry into the register. It will be possible to withdraw

such an opt-out at any time. There will be no possibility to

opt out European patents with unitary eﬀect.

The judges of the UPC

The Court will be presided over by both legally qualiﬁed

judges and technically qualiﬁed judges. The judges must

be nationals of a Contracting

Member State, have the highest

standards of competence, have

proven experience in the ﬁeld

of patent litigation and good

command of at least one oﬃcial

language of the EPO.

Legally qualiﬁed judges shall possess the qualiﬁcations

required for appointment to judicial oﬃces in their

respective Contracting Member State. Technically qualiﬁed

judges shall have a university degree and proven expertise in

a ﬁeld of technology as well as proven knowledge of civil law

and procedure relevant to patent litigation.

Mediation, arbitration and training

A patent mediation and arbitration centre with seats in

Ljubljana and Lisbon and a training framework for judges

with facilities in Budapest shall be established.

Court fees

The court fees will consist of a ﬁxed fee, and above a

predetermined ceiling, a value-based fee. The court fees will

be ﬁnally decided by the Contracting Member States in the

Administrative Committee of the UPC. They will however

be prepared by the Preparatory Committee established by

the Signatory States of the UPC Agreement.

The Court will be

presided over by

both legally qualiﬁed

judges and technically

qualiﬁed judges.

Beneﬁts of the UPC – why not to opt out

The proprietor of a classical European patent will be able to

choose to opt out the patent from the jurisdiction of the UPC.

When making this choice the patent holder will need to weigh

the advantages of litigating before the UPC against possible

disadvantages. The main beneﬁts of the UPC would be

y a uniﬁed jurisprudence resulting in increased predict-

ability and the avoidance of parallel litigation,

y judgements (injunctions, damages) with eﬀect in 25

Member States of the EU, and

y the expectation of speedier procedures than in many of

the individual Member States.

Choice between different divisions of the UPC-CFI

In the case of infringement actions it will on some

occasions be possible for the plaintiﬀ to choose between

diﬀerent divisions of the UPC-CFI depending on the place

of infringement or the domicile of the defendant. The

choice is expected to depend mainly on the convenience of

the venue and on the language

of proceedings of the the

divisions. In terms of

eﬃciency, speed, quality of

judgements and interpretation

of law, no major diﬀerences are expected. All the panels will

operate under the same Rules of Procedure and the decisions

of the UPC-CFI will be reviewed under appeal by the UPC

Court of Appeal. The UPC Court of Appeal will be a warrant

for a uniform jurisprudence.

The UPC Court of Appeal

will be a warrant for a

uniform jurisprudence.

The implementation of the new system takes place under

the auspices of two committees. The Select Committee is

responsible for preparing for the Unitary Patent Protection

and the Preparatory Committee is responsible for the estab-

lishment of the Uniﬁed Patent Court. Since the application

of the

UPP regulations is dependent on the entry into force

of the UPC Agreement the two strands are closely related.

The UPC Agreement will enter into force when it has been

ratiﬁed by 13 Signatory States. The three most patent inten-

sive Member States, i.e. Germany, France and the United

Kingdom must be among the states that have ratiﬁed. The

territorial eﬀects will expand as the ratiﬁcation processes in

the individual Contracting Member States are concluded.

The Select Committee is established under the European

Patent Convention. It consists of all the EU Member States

participating in the enhanced cooperation. The European

Commission, Business Europe, the European Patent Institute

and other EPC Member States that are not participating

in the enhanced cooperation have received the status of

observers. The Select Committee has among other things

been given the task to govern and supervise the activities of

the EPO relating to the UPP. An important task during the

preparatory phase will be to ﬁx the level of the renewal fees

for European patents with unitary eﬀect.

When will it happen?

The Preparatory Committee is established by the

Signatory States of the

UPC Agreement. Poland, the European

Commission and the EPO have observer status. Its objective

is to prepare for the establishment of the UPC in order for

it to be operational once the UPC Agreement enters into

force. The Preparatory Committee has identiﬁed ﬁve major

work streams; Legal Framework, Financial Aspects, Human

Resources/Training, IT and Facilities. Each work stream has

been assigned to a speciﬁc working group which have been

given the task of preparing proposals to the Committee

where all decisions are taken. The Preparatory Committee

has established a roadmap outlining all the diﬀerent tasks of

the Committee.

Up to date information about the time plan and the

expected time of entering into force of the new system is

published on the websites of the two committees.

More information about the Unitary Patent Protection and

the Uniﬁed Patent Court can be found on the following

websites:

Website of the Preparatory Committee:

http://www.uniﬁed-patent-court.org/

Website of the Select Committee:

http://www.epo.org/about-us/organisation/select-

committee.html

Website of the European Commission:

http://ec.europa.eu/internal_market/indprop/patent/

Further information

Production: Ministry of Justice, Government Oﬃces of Sweden. Printed by Elanders, 2014

Photo: Johnér/Corbis. Illustrations: Ministry of Justice, Government Oﬃces of Sweden.

The Select Committee

The Preparatory Committee

y A European patent in 25 EU Member States by one request.

y The unitary eﬀect of a European patent will cover the terri-

tories of those Contracting Member States that have ratiﬁed

the UPC Agreement.

y The proprietor of a European patent with unitary eﬀect will

pay only one annual renewal fee.

y The UPC-CFI will be one court with several divisions.

y The language of proceedings in the central division will be

the language in which the patent was granted.

y The UPC will be a court common to the Contracting Member

States.

y The Court will be presided over by both legally qualiﬁed

judges and technically qualiﬁed judges.

y The UPC Court of Appeal will be a warrant for a uniform

jurisprudence.

An Enhanced European Patent System