The slides to an introduction to the unitary patent and the Unified Patent Court which I presented in chambers to a selected audience of solicitors and patent attorneys on 2 Feb 2016.

1. Introduction to the Unitary
Patent and Unified Patent Court
Jane Lambert
2 Feb 2016

2. What is the Unitary Patent?
• A “unitary patent” is a shorthand term for “a
European patent with unitary effect.”
• A European patent is a patent granted by the EPO
under the provisions of the EPC.
• At present European patents are granted for
individual countries that are party to the EPC.
• A unitary patent will be a European patent
granted for the territories of a number of EU
member states as though they were a single
country.

3. Which states will be covered?
• They will have to include France, Germany and
the United Kingdom and at least 10 other EU
Member States of the European Union.
• Austria, Belgium, Denmark, Finland, France,
Luxembourg, Malta, Portugal and Sweden have
ratified Agreement on a Unified Patent Court.
• Potentially, every EU member state can join.
• 25 of the 28 EU members signed the Agreement.

4. History of the Unitary Patent
• Community Patent Convention 1975.
• Agreement on a Community Patent 1989.
• Community Patent Regulation proposed 2000.
• European Patent Litigation Agreement proposed
2003.
• Council Regulation on European and EU Patent
Court proposed 2009.
• Regulations 1257/2012 and 1260/2012 adopted.
• Agreement on Unitary Patent Court signed 2013.

5. Reg. 1257/2012
• Implements enhanced co-operation in the area of
unitary patent protection and constitutes a
“special agreement” within the meaning of art
143 of the EPC.
• Consists of 18 articles.
• Art 3 provides that a European patent granted
with the same set of claims in respect of all the
participating member states shall benefit from
unitary effect in those States provided that its
unitary effect has been registered in a Register for
unitary patent protection.

6. Reg. 1257/2012
• Art 4 provides that a unitary patent shall take
effect from the date of publication by the EPO of
the mention of the grant in the European Patent
Bulletin.
• Art 5 provides that the unitary patent shall confer
on its proprietor the right to prevent any third
party from committing acts against which that
patent provides protection throughout the
territories of the participating member states in
which it has unitary effect, subject to applicable
limitations.

7. Reg. 1257/2012
• Art 7 provides a defence of exhaustion of rights:
“The rights conferred by a unitary patent shall not
extend to acts concerning a patented product which
are carried out within the participating states after
that product has been placed on the EU market by,
or with the consent of, the patent proprietor, unless
there are legitimate grounds for the patent
proprietor to oppose further commercialization of
the product”.

8. Reg. 1257/2012
• Art 7 provides that as an object of property a
unitary patent shall be treated as a national
patent of the participating state in which,
according to the European Patent Register, the
applicant had his residence or principal place of
business on the date of filing of the application
for the European patent.

9. Reg. 1257/2012
The remaining articles provide for:
• Renewal fees
• C-operation between the Commission and the
EPO
• Survival of EU competition law and the law of
unfair competition
• Reporting the operation of the regulation
• Entry into force

10. Reg. 1760/2012
• This Regulation implements enhanced
cooperation in unitary patent protection with
regard to translation arrangements.
• No further translations are required if the
specification of a unitary patent application is in
English, French or German and the claims are
translated into the other two languages.

11. Reg. 1760/2012
• If there is a dispute the patentee must provide on
request at his or her own expense a translation of
the patent into the language of the place where
the patent is infringed or where the infringer is
domiciled and a translation of the patent into the
language of the court.

12. Reg. 1760/2012
• Natural persons, SME, universities, non-profit and
public research organizations from countries
where the official language is not English, French
or German will be compensated for the cost of
translating their applications into one of those
languages.

13. What is the Unified Patent Court?
• A court for the settlement of disputes relating to
unitary and other European patents that is
common to the Contracting Member States and
subject to the same obligations under EU law as
any national court of those EU member states.
• The UPC is neither an EU institution nor a
national court but a self-contained legal system
consisting of a Court of Appeal and a Court of
First Instance with its own substantive and
procedural law.

14. What is the Unified Patent Court?
• A court for the settlement of disputes relating to
unitary and other European patents that is
common to the Contracting Member States and
subject to the same obligations under EU law as
any national court of those EU member states.
• The UPC is neither an EU institution nor a
national court but a self-contained legal system
consisting of a Court of Appeal and a Court of
First Instance with its own substantive and
procedural law.

15. UPC Agreement
• The UPC is established by art 1 of an Agreement on a
Unified Patent Court (“the UPC Agreement”)
• Signed by all the member states of the EU except
Croatia, Spain and Poland on 19 Feb 2013.
• The UPC Agreement consists of 89 articles and annexes
a Statute of the Unified Patent Court and a table for
the distribution of cases between the three sections of
the Central Division of the Court of First Instance.
• Art 84 (4) provides that the UPC Agreement shall be
open to accession by any EU member state.

16. Jurisdiction
Art 3 of the UPC Agreement provides that the
agreement shall apply to any:
• European patent with unitary effect;
• Supplementary protection certificates issued for a
product protected by unitary patents;
• European patents that have not lapsed; and
• European patent applications pending at the date
of entry into force of the Agreement or filed after
that date.

17. Jurisdiction
• For a transitional period of 7 years after the date
of entry into force of the UPC Agreement, an
action for infringement or for revocation of a
European patent or supplementary protection
certificate designating a member state may still
be brought before national courts.
• During that transitional period a proprietor of or
an applicant for a European patent or holder of a
supplementary protection certificate may opt out
from the exclusive competence of the UPC.

18. Jurisdiction
Subject to the right to opt out, the UPC will have
jurisdiction over:
(a) actions for actual or threatened infringements of
unitary and other European patents and SPCs;
(b) actions for declarations of non-infringement of
unitary and other European patents and SPCs;
(c) actions for provisional and protective measures
and injunctions;

19. Jurisdiction
(d) actions for revocation and invalidity of unitary
and other European patents and SPCs;
(e) counterclaims for revocation and invalidity of
unitary and other European patents and SPCs;
(f) actions for damages or compensation derived
from the provisional protection conferred by a
published European patent application;
(g) 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;

20. Jurisdiction
(h) actions for compensation for licences on the
basis of Article 8 of Regulation (EU) No 1257/2012;
and
(i) actions concerning decisions of the European
Patent Office in carrying out the tasks referred to in
Article 9 of Regulation (EU) No 1257/2012.

21. Jurisdiction
Art 32 (2) of the UPC Agreement provides that
national courts shall remain competent for actions
relating to patents and SPCs which do not come
within the exclusive competence of the UPC.

22. Structure of the Court
Art 6 (1) of the UPC Agreement provides that The
UPC shall consist of a Court of First Instance, a
Court of Appeal and a Registry.

23. Court of First Instance
Art 6 (1) of the UPC Agreement provides that The
UPC shall consist of a Court of First Instance, a
Court of Appeal and a Registry.

24. Court of First Instance
• The Court of First Instance shall comprise a
central division as well as local and regional
divisions.
• The central division shall have its seat in Paris,
with sections in London and Munich.
• A local division may be set up in a Contracting
Member State upon request.
• A regional division may be set up for 2 or more
Contracting Member States on request.

25. Court of Appeal
• The Court of Appeal and Registry shall be
located in Luxembourg.
• Appeals may be lodged against final and interim
decisions of the Court of First Instance.
• Appeals against final decisions must be made
within 2 months and appeals against interim
decisions within 14 days.

26. Registry
• The Registry shall be located in Luxembourg.
• There will be sub-registries in each of the local
and regional divisions.

27. Rules of Procedure
• Art 41 (2) provides for Rules of Procedure to be
adopted by the Administrative Committee in
accordance with the Statute after consultation
with stakeholders and the Commission.
• The Preparatory Committee has prepared a
comprehensive set of 382 rules which are now in
their 18th draft.

28. Venue
• Infringement actions must be brought in the
division where the infringement takes place or is
threatened or where the defendant or one of
them is located.
• Claims for declarations of non-infringement or
revocation of a unitary or European patent must
be brought in the central
• Counterclaims for revocation may be heard in the
same case as the action for infringement or
referred to the central division

29. Procedure
• Art 52 (1) of the UPC Agreement provides that
proceedings before the Court shall consist of a
written, an interim and an oral procedure.
• Written procedure equates roughly to the
exchange of pleadings.
• Interim procedure equates to case management.
• Oral procedure consists of final submissions after
the evidence has been adduced.

30. Further Information
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 5AH
+44 (0)20 7404 5252
jlambert@4-5.co.uk
http://nipclaw.blogpot.com
Twitter @nipclaw