Value from Knowledge

Are you ready for the Unified Patent Court?



The Agreement on a Unified Patent Court enters into force 1 June 2023. With the UPC agreement the Unitary Patent (UP) and the Unified Patent Court (UPC) comes into existence. From the outset the Agreement covers the 17 EU countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

A Unitary Patent (UP) will be available for all EP patent applications that are granted after 1 June 2023. Already now, the grant of European patent applications may on request be postponed to this date.

A Unified Patent Court (UPC) that has the competence of hearing patent cases based on Unitary patents, EP patents and SPCs in the member states. In a transitional period, owners of EP patents and SPCs can opt-out their patents or SPCs from the Unified court if they wish to prevent third parties from instigating litigation based on their EP patent or SPC before the UPC.

The UPC agreement has consequences for users of the Patent system in EU, in particular:

  • Owners of pending EP applications may validate any EP application that will issue after 1 June 2023 as a UP.
  • Owners of granted EP patents and SPCs may instigate litigation based on their granted patent at the UPC, and thereby get a decision for all 17 countries where a patent exists.
  • Third parties can instigate revocation actions before the UPC, unless the patentee has opted-out before the revocation action is initiated.

Even for non-patent holders the new system has significance.

  • All legal and natural persons operating in one or more member states can be sued before the UPC. In case that you are sued under the UPC it is important that you immediately take action to prepare your reply in order to be ready to submit a complete response, optionally including a complete invalidity counterclaim, before the deadline of 3 months from being served the complaint.

VALUA recommend:

  1. Opting-out all existing EP patents or SPCs before 1 June 2023, in order to avoid third parties initiating cases before the UPC based on these rights. If the situation should arise where you wish to initiate legal proceedings against a third party before the UPC, the opt-out request can be withdrawn and you can start proceedings before the UPC.
  2. For pending EP applications that will issue after 1 June 2023, we recommend that you consider whether the granted EP patent should be validated as an UP, because this appears to be a cost efficient way to obtain protection in many countries. If you decide to validate your granted EP patent by traditional national validations, we recommend that you opt-out the patent before grant for the reasons explained above.
  3. Considering your liability exposure and planned response in view of the UPC. In particular because the new system will imply very short response time, your organization will be better of planning for this situation.

VALUA have been preparing for the UPC and provides advice concerning the consequences and opportunities provided with the UPC agreement. We are ready to submit requests before the UPC, including requests for opting-out.