After years of uncertainty triggered in part by the withdrawal of the UK from the Unitary Patent System and by constitutional challenges brought in Germany against the ratification of the Agreement on a Unified Patent Court, the UPC [1] seems now on the verge of becoming a reality.

Over the last few months two additional member states, Germany and Slovenia, ratified the Protocol on the Provisional Application of the UPC Agreement (PAP-Protocol), bringing the total number of ratifications to 12, that is one short of the required 13 ratifications for entry into force of the Protocol. The PAP-Protocol[2] is intended to ensure a smooth transition by allowing certain aspect of the UPC Agreement to come into force provisionally before the UPC becomes fully operational. Austria is expected to be the next member state to ratify the PAP-Protocol and the UPC Agreement [3] could enter into force by mid-2022.  But what does it mean for Patent holders?

Once the UPC Agreement has entered into force, transitional provisions will apply for a period of at least seven years. During this period, an applicant filing a European patent application at the EPO will have the possibility upon grant by the EPO to choose between i) a Unitary EU Patent [4] by requesting “unitary effect” in the participating EU states or ii) a Non-Unitary EU Patent by validating the EP patent in several chosen states. When requesting the unitary effect, the applicant may also consider validating in countries which are either non‑EU members (such as Switzerland, Norway, and the UK) or EU members that do not participate in the unitary patent system (such as Spain, Poland, and the UK).

For applicants seeking protection in many countries, the Unitary Patent offers a rather compelling proposition [5]. However, this needs to be balanced by the possibility of a central attack on the Unitary Patent. Under the current system, a third party can oppose a patent at the EPO during a nine month opposition period. Passed this opposition period, actions against invalidity are brought individually in national courts which means that a patent revoked in one country may still remain valid in another. Under the new system, actions against an EU patent will be heard at the UPC, and possibly revoked all at once in all the participating EU member states. The possibility of a central attack on a valuable patent represents a new and significant risk for the applicant. For holders of Non-Unitary EU patents, the transitional provisions will give the possibility for the applicant to Opt-Out of the Unified Patent Court [6]. This means that offensive actions against the granted patent cannot be brought at the UPC. There will be however no possibility to opt-out of the UPC for a European patent with unitary effect. Once the transitional provisions have passed, actions against infringement or validity will take place at the UPC for member countries taking part in the unitary patent system. But let’s not get carried away and see which member state will ratify the Protocol next to take us into the UPC era!


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