Harmonizing European Patent Law: The Unified Patent Court and the Unitary Patent System
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The Unified Patent Court – An introduction
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On the first of June 2023, the Unitary Patent Court Agreement (UPCA) came into force. As a result, the Unitary Patent Court (UPC) was established, and the Unitary Patent System introduced. This new European jurisdiction provides broader patent protection for participating member States and facilitates the harmonization of laws governing patent jurisprudence. Only EU member states shall join the UPCA, with the UK being disqualified from participation as of 2020. While not all EU countries have both signed and ratified the UPCA, currently 18 countries are members.
Creating a single court in charge of litigation and revocation cases ensures a more stable and unified law. As of the first of June 2023, for disputes where acts of infringement take place in several states, a single action may be brought before the UPC. Indeed, the past system allowed such cases to be brought only before different national courts. It sometimes created conflicting decisions as the courts held different approaches. The UPC offers a common interpretation of patents within the participating member states.
With the establishment of the Unified Patent Court (UPC), exclusive jurisdiction for litigation has been transferred from national courts to the UPC. Consequently, a single patent now benefits from a uniform legal application across most of Europe.
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The Unitary Patent – meaning and effects.
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Simultaneously to the enforcement of the UPCA, the possibly of requesting a unitary effect for a European Patent before the EPO was also introduced. When a patent is granted unitary effect, it has common legal status throughout all the agreement member states. In other words, a uniform legal protection will be guaranteed across the UPCA member states. In order to obtain a unitary effect, the applicant will have to present its application before the EPO. Are concerned all European patents granted after the first of June 2023. The request for unitary effect must be filed, within one month after grant. Additionally, the patent must have the same set of claims for all participating members states and the party must provide additional translation when required. Patents in German or French must be fully translated in English. A patent in English must be translated in any other language of the European Union.
To maintain a Unitary Patent, the patent proprietor must pay an annual renewal fee. In contrast, conventional European patents require several renewal fees that may vary in amount and must be paid to various national patent offices. These offices operate under different legal requirements, particularly regarding deadlines and legal remedies. With a Unitary Patent, the proprietor pays a single renewal fee directly to the EPO, using one currency and under a uniform legal regime concerning deadlines and acceptable means of payment. The amount due depends on the number of years since the patent application was filed. For example, 2 years after filing, the annual renewal fee is 35€. In contrast, after 20 years, the annual renewal fee increases to 4.855€.
If a patent is not granted the unitary effect, the renewal fees procedure differs. In order to maintain a European patent in, for example, Germany, France, Italy and the Netherlands, the holder will have to bear the fees for each countries each year. Whether filing a unitary patent request is advantageous depends on the number and selection of EU countries in which patent protection is sought. Renewal fees for a unitary patent are nearly identical to those for a European patent covering four individual major EU countries. Consequently, pursuing a unitary patent is more cost-effective when protection is desired in more than four EU countries. Although the renewal fees are higher than those for patents in a few countries (ex: France and Germany), they are lower than the total fees required for patents in all 18 member states.
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How does the European Patent Court work?
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The UPC is organized with a court of first instance, a court of appeal, a registry and a ‘Patent mediation and arbitration center’ (for alternative dispute resolution). The court of appeal is located in Luxembourg. The tribunal of first instance is divided between different divisions, with the central divisions in Paris, Munich and Milan. In addition to that, multiple local divisions were created across Europe, with also regional divisions. With this decentralized system, most UPC member states have a first instance division, ensuring a more accessible jurisdiction.
Only attorneys who are registered and authorized to represent clients in contracting member states may represent parties before the UPC. Regarding the patent itself: all granted unitary patents are exclusively handled by the new court. In contrast, a European patent (i.e., a patent granted before the UPCA or when the holder chose to not apply for a unitary patent) may be handled either by the UPC or by national courts. In other words, all European patents, which are non-unitary, fall under the jurisdiction of both the national courts and the Unitary Patent Court. Moreover, a European patent benefits from a transitional period status, allowing the holder to decide whether to remain under the jurisdiction of the Unified Patent Court (UPC) or to ‘opt-out’. Over a period of 7 years, extendable once, the holder may choose to ‘opt-out’ at any time. During this period, to ensure a seamless transition, both the UPC and national courts have double competence over disputes concerning the patent, unless the holder does decide to ‘opt-out’. In that case, national courts will have exclusive competence over patent litigation. Finally, the decision to opt-out can be undone one time. However, ‘opting-in’ will only be possible if there has been no national litigation.
The UPC does not have competence over all matters concerning patents. According to the Article 32 of the UPCA, it is competent for
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actions regarding actual or threatened infringement of patents, supplementary protection certificates and related defenses, including counterclaims concerning licences;
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actions for declaration of non-infringement of patent and supplementary protection certificates;
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actions for provisional and protective measures and injunctions;
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actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;
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counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;
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actions for damages or compensation derived from the provisional protection conferred by a published European patent application;
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actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;
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actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012;
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actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012
The UPCA determined that some matters shall remain under the jurisdiction of national courts, for instance, actions relating to national patents and supplementary protection certificates do not come within the exclusive competence of the Court. The UPC is indeed not competent for national patents, which does create conflicts sometimes as in an action concerning a national patent and a unitary patent, they cannot be tried before the same court.
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An action before the UPC
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The competent jurisdiction will depend on various criteria. Concerning infringement actions, there are multiple possibilities. The local or regional court of the UPC member state in which the infringement took place (Art 33 (1)(a)), or in which the defendant has its seat (Art 33 (1)(b)), will be competent. If the infringement took place in a member country without a local or regional division (Art 33 (1)(2)) or if the defendant has no seat in a UPC member state (Art 33 (1)(3)), the central division will be competent.
For isolated nullity cases, the central division shall be competent (Art 33(4)). A counterclaim for revocation shall be brought before the local or regional division (Art 33 (3)(a)). However, the local or regional division may refer the nullity or the entire proceedings, with the agreement of parties, to the central division (Art 33(3)(b)).
All actions before the central division of the court of first instance of the UPC are sorted according to the International Patent Classification (IPC) of the World Intellectual Property Organization (WIPO). The cases brought before the central division are distributed between the three sections (Annex II, UPCA, as amended on the 26 June 2023 under Article 87 (2) UPCA[1]). The Milan section hear cases on (A) Human necessities, without Supplementary protection certificates. The Munich section hear cases on (C) Chemistry, metallurgy, without Supplementary protection certificates and (F) Mechanical engineering, lightning, heating, weapons, blasting. The seat in Paris hears the cases on (B) performing operations, transporting, (D) textiles, paper, (E) fixed constructions, (G) physics, (H) electricity and Supplementary protection certificates.
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What is the language of proceedings?
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With a court representing the interests of 18 European countries, the matter of the language is central. The language of proceedings was determined by the Articles 49, 50 and 51 of the UPCA[2]. It was decided that the proceedings at the Court of First instance before any local or regional division shall be held in an official language of the European Union which is the official language or one of the official languages of the Contracting Member State hosting the relevant division. The parties may also agree to use the language in which the patent was delivered, if approved by the competent panel. At the central division, the proceedings shall be in the language in which the patent concerned was granted.
At the Court of Appeal, the language of proceedings shall be the one used in first instance. Alternatively, the proceeding may be held in the language in which the patent was granted if the parties agree on it.
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What are the stages of procedure in first instance?
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Concerning infringement and revocation proceedings, the first instance work in three sub-procedures. In order to respect the one-year deadline specified in the UPC-RoP[3], each procedure must respect a strict and short time limit. For instance, the UPCA committed to ensure a final hearing within one year on infringement cases, as mandated by the Rules of Procedure book (UPC-RoP[4]).
The written procedure primarily involves the exchange of pleadings, with the statement of claim initiating the action. Depending on the action, it may begin with a statement of infringement or a statement of revocation. Following those, a statement of defense must be provided by the defendant and their counsel. A party’s first written pleading (statement of claim or first statement of defense) must provide all its arguments, evidence, statement of law, experts opinions. In other words, the party and their counsel must put great care in their statements as they are essential to the evolution of the action. It is strategic to provide all evidence in the first brief, especially as the written procedure is under a very strict time-limit. However, the judge-rapporteur may order further evidence in the interim procedure. Such a tight schedule present great challenges for the defending party, as they must raise all arguments of non-infringement as well as the attacks on the validity of the patent in the first statement of defense. The latter must be submitted no later than three months after the statement of claim.
Following the closing of the written procedure, the interim procedure starts, lasting one to three months. During those months the judge-rapporteur give different directions to parties to prepare the oral hearing and ensure the case falls under the one-year deadline. The judge may request more evidence or additional documents. If ordered, an interim conference may enable the judge to clarify parties’ positions, claims, and explore the possibility of an amicable settlement. Additionally, a decision on bifurcation or the joining of cases may be decided during the interim procedure.
Lastly, the hearing of the case occurs during the oral procedure, lasting no more than a day in most actions. Oral evidence from the parties, such as the questioning of experts and/or witnesses, is heard over the course of the day. To ensure the time frame is respected, oral interventions will be limited to specific issues agreed during the interim procedure. As the hearing will have been prepared during the written and interim procedures, the oral one is expected to be very efficient and brief, though an extended oral procedure may be ordered in the event of a complex case.
The decision of the court will be disclosed no later than six weeks after the closing of the oral procedure, along with its reasons. The judgment may also be delivered immediately after the hearing, with the detailed reasons provided afterward. Any party unsuccessful in their demand may decide to appeal. However, the decision to appeal does not have suspensive (Article 74 of the UPCA) effect unless it concerns a decision on actions or counter claim for revocation.
In the event of a procedure for damages award or decision on the costs, those will take place after the decision on the merits.
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What are the fees for an action before the UPC?[5]
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As the UPC was created as a self-financing court, fixed fees were mandated in the UPCA for any action. All parties are expected to bear court fees, a novelty for claimants from France, with the starting fees for an action in infringement, a counterclaim for infringement or an application for provisional measures, fixed at 11,000€. For an action in revocation, the fees are 20,000€..
Additionally, value-based fees can apply for some actions, for instance where a procedure for damages is engaged. In that case, the fees can range from 2,500€ for an action with a value exceeding 500,000€ to 325,000€ for an action with a value exceeding 50 million euros. For instance, an action with a value of 2 million euros will be costing 11,000€ in fixed legal fees plus 13,000€ in value-based fees.
A party may obtain reimbursement for legal fees under specific circumstances. Similarly, as in French courts, the legal costs incurred by the winning party shall be borne by the losing party. However, in cases where the winning party is only partially successful, the court may rule that each party will bear its own legal costs. Also, the successful party may engage in a different procedure to determine the cost of the legal fees.
Overall, the possible reimbursement of legal costs depends on the value of the action.
Small and micro entities will also benefit from a 40% reduction in court fees. A compensation of 5,000€ for translation costs is available to individuals, SMEs, non-profit, universities and public research organizations based in EU Member states. To qualify, the underlying European or Euro-PCT patent application must be filed in an EU language other than English, French, or German. The compensation request must be submitted simultaneously with the request for unitary effect and include a declaration confirming eligibility. Furthermore, compensation is granted only if explicitly requested by the patent proprietor. The compensation request must accompany the request for unitary effect and contain a declaration stating that the proprietor qualifies for the compensation.
Unitary Patent proprietors who file a statement to the effect that they are prepared to allow any person to use their invention (licence of right) will additionally benefit from a 15% reduction in renewal fees which fall due after receipt of their statement.
Recently, the court of appeal ruled that the reimbursement of 20% of the legal costs when an action is withdrawn can only be received if this withdrawal occurs before the end of the oral procedure (JUB, CA, 18 avr. 2025, UPC_CoA520/2024). The court also emphasized that, according to the rule 265 of the UPC-RoP, if an action is withdrawn, the claimant may receive a reimbursement of 60% if filed before the end of the written procedure, 40% if filed before the end of the interim procedure, and 20% is filed before the end of the oral procedure.
[1] Administative CommitTEE: DeCISION REGARDING THE AMendment of the UPCA
[2] agreement-on-a-unified-patent-court.pdf
[3] Ibis1
[4] https://www.unified-patent-court.org/sites/default/files/upc_documents/rop_en_25_july_2022_final_consolidated_published_on_website.pdf