So far, the following 17 EU Member States (Participating Member States) have ratified the agreements for the unitary patent and the creation of a Unified Patent Court:
AUSTRIA, BELGIUM, BULGARIA, DENMARK, ESTONIA, FINLAND, FRANCE, GERMANY, ITALY, LATVIA, LITHUANIA, LUXEMBOURG, MALTA, THE NETHERLANDS, PORTUGAL, SLOVENIA, SWEDEN.
The Unitary Patent (UP) will be a patent protection instrument resulting from the consolidated procedure envisaged for the European Patent, and it will be effective in all the Participating Member States. The Unitary Patent represents a European patent granted by the European Patent Office, which the applicant/patent owner has selected to have unitary effect in the Participating Member States.
Besides the Unitary Patent, the “classic” European patent having effect in the respective member states of the European Patent Convention (EPC) after national validation will be still available. The “classic” European patent remains the only option for those member states of the EPC, which are either no member states of the EU, like Switzerland or Turkey, or which are no Participating Member State, like Spain.
The Unified Patent Court (UPC) will be a court common to the Participating Member States and, once fully operational, will have exclusivejurisdiction over disputes relating to "classic" European Patents validated in the Participating Member States, European Patents with unitary effect (Unitary patents) and the related Supplementary Protection Certificates (SPC).
Nevertheless, during a transitional period of 7 years from the entry into force of the UPC, for "classic" European Patents and related SPCs it will still be possible to bring an action for infringement or revocation also before the National Courts of the Participating Member States. It is possible that this transitional period will be extended by further 7 years.
Additionally, during said transitional period, pursuant to Art. 83 of the UPC Agreement, the owner of a granted "classic" European Patent or the applicant for a European Patent application and/or of the related Supplementary Protection Certificate who does not want its patent (application) or SPC to be judged by the UPC, may decide to opt-out from the exclusive jurisdiction of the UPC, unless an action regarding the patent has already been brought before the UPC.
The opt-out will be valid for all the Member States of the European Union in which the European Patent has been validated or which are designated in the European Patent application.
In the event that, after the grant of a European Patent subject to opt-out, unitary protection is still requested, the opt-out will be automatically considered withdrawn.
Unless an action has already been brought before a National Court in relation to an opted-out patent, it will always be possible to withdraw the opt-out. Once the withdrawal of the opt-out is effective, it will no longer be possible to opt-out again such patent.
Please note that it will not be possible to opt-out any European Patent with unitary effect (Unitary patent), as the UPC will have exclusive jurisdiction on those. In other words: Once the applicant/patent owner has taken a decision for the unitary effect, there is no way back.
The advantage and disadvantage of the Unitary Patent Court is the unified exclusive jurisdiction. Both infringement and invalidity actions are heard by special national UPC courts of 1st instance in a Participating Member State and then by a central UPC court of 2nd instance. Thus, a single UPC court decision on infringement or invalidation is valid for all Participating Member States, while a “classic” European patent is subject to national court decisions, which have to be initiated in each of the member states of the EPC in which the patent is in force and which are valid for the respective member state only.
Please let us know whether your clients are interested in opting-out their granted “classic” European patents or pending European patent applications.
The question of selecting unitary effect of pending European applications can be dealt with later, i.e. upon receipt of the Communication for the intention to grant a European patent.