FAQ

What does the new patent system imply?

The new patent system implies two things: (i) A novel type of right will be introduced, a "European patent with unitary effect" or a "unitary patent". (ii) A new single European court will be introduced – the "Unified Patent Court" or the "UPC" – which will decide patent cases concerning the new unitary patents as well as the traditional European patents and also cases concerning relevant supplementary protection certificates.

When will the new patent system enter into force?

1 June 2023

Which countries will participate?

All EU member states, except Poland, Spain, and Croatia. In the start-up phase, however, not all countries will participate. 

Will the UPC and the new unitary patent affect my agreements, e.g. licensing agreements?

Yes, most likely. For more details, see our page concerning the UPC and agreements here. 

What is a unitary patent, and how will it differ from a European patent?

A unitary patent is a European patent with unitary effect. The main difference between a unitary patent and a traditional European patent is that the unitary patent has the same effect in all countries where it applies and therefore cannot be transferred only with effect for one or more individual countries. Nor can the unitary patent be revoked for one or more individual countries, but only with effect for all countries covered by it. An infringement and revocation action against a unitary patent may be brought only before the UPC, whereas traditional European patents may be opted out of the UPC system. Another difference is that a unitary patent will not have to be translated into the languages of the countries where it is to apply. Read more about the unitary patent and opt-out.


How do I apply for a unitary patent?

In order to be granted a unitary patent, an application must be submitted to the EPO in the same way as for a traditional European patent, and the application process will not differ from the current process. Within one month of the announcement of patent grant, the applicant must simply submit a request to the EPO for the patent to be granted unitary effect.

A European patent will only be granted with unitary effect if it has been granted with patent claims which are identical for all countries participating in the system. In this context, it is important to note that Poland is still regarded as a participating member state although the unitary patent will not be effective in Poland because Poland has not ratified the UPC Agreement. In other words, a European patent which is to have unitary effect must designate Poland, even though the unitary patent will not as such have effect in Poland.

European patents will only be granted unitary effect if they are granted on the date when the system enters into force or later. This means that existing patents which have already been granted will not be granted unitary effect. However, divisional applications which have not yet been granted may be granted unitary effect if they are granted after the system has entered into force. It may therefore be a good idea to consider already at this point whether to divide out certain parts of an application and proceed to grant already now, while "saving" other parts until the system enters into force so that they may be eligible for unitary patent protection.


What fees will be payable for a unitary patent?
 

For a unitary patent, renewal fees will be payable to the EPO only, as opposed to traditional European patents. No other fees will be payable to national patent authorities where the unitary patent applies. The amount of renewal fees is intended to reflect the cost of a traditional European patent in the four countries where European patents were most often validated in 2015 (the UK, Germany, France, and the Netherlands) although the unitary patent may apply in up to 25 countries.

Will a unitary patent have to be translated into the languages of the countries where it is to apply?

Once the unitary patent system has been fully phased in, a unitary patent will not have to be translated into the languages of the countries where it is to apply, as opposed more or less to the traditional European patent. As a general rule, the unitary patent is only required to be available in one of the official languages of the EPO (English, German, or French), although the patent claims must be available in all three languages.

For a transitional period of no more than 12 years, however, the unitary patent must be available in English, either as granted or in a translated version.

The unitary patent system includes a compensation scheme which allows natural persons, small and medium-sized businesses and universities, etc. to have some of their translation costs reimbursed if they submit an application in an EU language which is not one of the official EPO languages.

Please note that at the application stage of the process, many countries will still require a translation of the unitary patent if the application is to enjoy provisional protection, see below.

Is there any difference between the new system and the current system with regard to provisional protection, i.e. protection before the patent is granted?

There is no difference with regard to provisional protection in relation to the current system. Thus, provisional protection will still be available for European patent applications if translations are submitted in accordance with article 67 of the EPC. This applies in relation to the traditional European patents and in relation to the new unitary patents.

However, please note that there will be no special regime in this regard for unitary patents, which will not differ from a traditional European patent application at the application stage. Thus, the competent authorities of countries – such as Denmark – where translation is a requirement to obtain provisional protection will still require submission of a translation of the patent claims.

Will supplementary protection certificates also be covered by the new system?

Yes. If you have a supplementary protection certificate which has been issued by the Danish authorities and the underlying patent is a traditional European patent, it will also be possible to bring an action before the UPC concerning infringement of the SPC and, similarly, in the seven-year transitional period (which may be extended by up to an additional seven years) an action may also be brought before the national courts. The same applies to actions for revocation of the SPC, e.g. revocation of the SPC because the underlying patent is invalid.

The new system thus does not cover SPCs based on national patents.

It is unclear how SPCs will be treated in the context of the new unitary patent. It is clear that, at present, it is not possible to issue a unitary SPC with effect for all EU member states. However, it may perhaps be possible to use a unitary patent as the basis for applying for SPCs in individual countries. In that case, one SPC will have to be issued for each country where the unitary patent applies and where protection is sought. However, the question is still subject to considerable uncertainty.

Will the rules on double patenting be affected by the new system?

The new patent system will not affect double patenting; and it will still be left to national law to decide whether, like in Denmark, to grant protection to an invention disclosed in a European patent and either a national patent or a national utility model, see article 139(3) of the EPC.

In the future system, it will thus be possible to obtain a national Danish patent granted by the Danish Patent and Trademark Office for an invention which is also disclosed in a traditional European patent or a unitary patent.

However, article 4(2) of the Unitary Patent Regulation expressly precludes protection of an invention disclosed in both a traditional European patent and a unitary patent.

What are the implications of the UPC?

The Unified Patent Court is a common European court with exclusive competence to decide patent, infringement and revocation actions concerning traditional European patents and the new unitary patents as well as relevant supplementary protection certificates. Actions concerning provisional and protective measures (preservation of evidence, preliminary injunctions, seizure, freezing orders etc.) will also fall within the UPC's exclusive competence.

In addition, the UPC can review decisions of the EPO in relation to its administration of the new unitary patent, e.g. a decision by the EPO to deny unitary effect to a European patent.

The UPC will not have general powers to review the EPO's decisions. Such powers will still not exist.

Cases falling outside the scope of the UPC's competence include entitlement actions, i.e. actions to determine who is the rightful owner of a European patent or a European patent application.
 

How will the UPC be structured?

The UPC will be composed of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will have a central division and a number of local and regional divisions.

The central division will be seated in Paris with sections in London and Munich. The central division will primarily deal with revocation actions and actions for a declaration of non-infringement. The cases before the central division will be allocated according to the WIPO international patent classifications. The London section will deal with cases concerning human necessities as well as chemistry and metallurgy (mainly medicinal products), while the Munich section will deal with cases concerning mechanical engineering, lighting, heating, weapons, and blasting. The rest of the cases will be dealt with by the Paris section.

The local and regional divisions will primarily hear infringement actions. A country does not need to set up a local division, which means that infringement cases concerning this country must be brought before the central division. Two or more countries may also join forces to set up a regional division for those countries. So far, this option has only been used by the Baltic countries, which have set up a regional division together with Sweden. A local division will be set up in Denmark. 

Regardless of whether a case is decided before the central division or one of the local divisions, the decision may be effective for all countries participating in the UPC.

The Court of Appeal and the Registry will be seated in Luxembourg.

What will it cost to bring a case before the UPC, and will it be more cost effective than the existing system?

UPC proceedings will probably be substantially more expensive than proceedings before the national courts. The reason is that the UPC procedural system places very heavy demands on the written procedure preceding the oral hearing. The claimant must produce all evidence and arguments in the statement of claim, and the defendant must produce all evidence and arguments in the statement of defence (also known as a front-loaded procedural system).

There will only be limited possibilities of producing new evidence, claims/pleas, etc. subsequently or in a potential appeal. This differs from the Danish system, where it is possible to start out by pursuing one line of argumentation and then change the argumentation along the way in response to the evidence etc. produced by the other party. Before the UPC, all evidence, claims/pleas, etc. must be produced from the outset so as not to forfeit the possibility of pursuing a piece of evidence or an argument later. The claimant will thus need to spend much more time preparing the case than in the Danish system, and the defendant should start working on its defence already from the point when it suspects that there may be a risk of being sued.

On the other hand, it will probably be less costly to conduct one case before the UPC instead of a number of cases before a number of different national courts, which is de facto the state of play if you are seeking a judgment for patent infringement or revocation in a number of countries. The UPC proceedings will probably cost the equivalent of three or four regular cases due to the front-loaded procedural system described above.

As a novel feature in relation to the Danish system, potential defendants before the UPC may submit a so-called protective letter, see below.


Will any court fees be payable for bringing an action before the UPC?

Yes. In order to bring an action before the UPC, you will have to pay a court fee consisting of a fixed amount based on the type of action and – for some types of case – a variable amount based on the value of the action. For infringement actions, a basic court fee of EUR 11,000 will be payable plus a value-based fee of up to EUR 325,000. For revocation actions, the court fee will be EUR 20,000.

For counterclaims for revocation in an infringement action, a basic court fee of EUR 11,000 and a value-based fee will be payable in the same way as for the claim of infringement. However, the total court fee for the counterclaim for revocation is subject to a maximum of EUR 20,000. This should be seen in light of the fact that in Danish law no court fee is payable for a counterclaim for revocation.

However, no court fees will be payable for traditional European patents to opt out of the UPC system. This was originally the plan, but the proposal was taken off the table so that no fee will be payable for opting out of the UPC system.


What are the possibilities of recovering costs before the UPC, and what is the risk of being ordered to pay costs if the other party prevails?

Like in Danish law, the UPC Agreement provides that the unsuccessful party will generally have to pay the other party's cost of proceedings, including legal fees etc.

However, only "reasonable and proportionate" costs may be claimed by the successful party. A ceiling has been imposed on the amount that the successful party may claim in proportion to the value of the action. This ceiling thus reflects the maximum sum that may be claimed.

See the latest draft rules on the scale of recoverable cost ceilings

Will legal aid be available before the UPC?

Yes. Natural persons may apply for legal aid to cover most types of cost involved in an action before the UPC if the person in question is unable to pay the cost of proceedings and if the prospects of prevailing are fair.

In general, businesses will not be eligible for legal aid but, like natural persons, small and medium-sized businesses, public research institutions, etc. may recover some of their translation costs concerning an application for unitary patent, see below concerning translation of the unitary patent.
 

How does the opt-out scheme work?

The opt-out scheme allows the holder of a traditional European patent to remove the patent from the UPC system so that actions regarding the patent cannot be brought before the UPC. Only traditional European patents may be opted out; unitary patents do not have this option. The opt-out scheme will run for at least seven years after the entry into force of the UPC system, and it may be extended for an additional seven years. But an application to opt out will remove the patent from the UPC system for its entire life. An application to opt out may be submitted only as long as no action against the patent is pending before the UPC. After opting out of the system, however, the patent holder may always decide to opt into the UPC system again. But it will not be possible to opt in if an action against the patent is pending before a national court.

Applications to opt out may be submitted during the sunrise period, which is at least the three or four months before the date when the UPC system enters into force.

No court fee will be payable for an application to opt out.

Read more about opt-out


I have a European patent – should I opt out of the UPC system?

There is no general answer to this question. The question must be considered carefully for each patent and each product it protects and for the market concerned.

The most important thing is to bear in mind that with the new UPC system it will be much easier to enforce a patent with effect in 25 countries. On the other hand, it will also be easier for competitors to have the patent revoked with similar effect. These two factors must be carefully weighed.

There is no requirement that a family of patents must all either participate in the system or opt out. It will thus be possible to pursue a strategy of opt-out for divisional or divided-out applications, while keeping other applications in the system. It will also be possible to have some applications continue along the national tracks as national patents or utility models, see above concerning double patenting.

It is not yet known how effective the system will be and how the Rules of Procedure will be enforced.


Which patents will be covered by the new patent system?

Unitary patents and traditional European patents which have not been opted out of the system as well related supplementary protection certificates will be covered by the system. National patents and national utility models, on the other hand, will never be covered by the system. SPCs relating to national patents will not be covered by the system, either.


Will actions against Danish nationals and businesses have to be brought in Denmark under the new system?

No. Although the UPC will have a local division in Denmark and the new system will also enable Danish nationals to be sued before that division, there is no guarantee that this will always be the case. If the Danish company has been active in other countries, e.g. by selling products, the patent holder may also choose to bring an action in one of those countries.

How will proceedings before the UPC differ from proceedings before the Danish courts?

First and foremost, proceedings before the UPC differ in that the written procedure will be much more focused around the statement of claim and the statement of defence, as the UPC operates on what is known as a front-loaded procedural system. There will only be a limited possibility of introducing new arguments later. This places great demands on the parties during the written procedure, not least the defendant as the defendant will generally only have three months to produce its statement of defence and all of its evidence, pleas, etc.

Secondly, proceedings before the UPC differ in that the Court of First Instance is expected to deliver judgment within one year, which is rarely the case with the Danish courts in cases on the merits. This means that the parties may expect that time limits will not be extended to the same extent as before the Danish courts, and that time limits will generally be shorter. 

Thirdly, the oral hearing before the UPC will differ from an oral hearing before a Danish court. For one thing, the hearing is expected to take only one day. For another, the judge may be expected to take a much more active role than in Danish actions. The latter will probably also apply in relation to the written procedure, where the UPC may be expected to encourage the parties to produce evidence etc., and more so than the Danish courts. No expert surveys by court appointed experts will be commissioned as this concept is understood in Danish law, but the rules allow the UPC to appoint experts to help the court on matters within their expertise. 

What will be the language of the proceedings?

The answer depends on where the action is brought and which language the individual countries have chosen for the divisions in question. The language of proceedings before the Danish division may be Danish or English. As a general rule, the claimant will choose the language if there is a choice. This means that the defendant will have no guarantee of being sued in a language it understands.

How long will an action take?

The system proposed will be swifter than in Denmark. Thus, the general expectation is that an action before the Court of First Instance will be completed in less than a year. A front-loaded procedural system is envisaged where evidence, submissions, etc. must be in place already from the start of proceedings and where – unlike in Denmark – it will not be possible to produce material as the action proceeds through the stages of written procedure.


Which judges will participate?

Patent infringement actions will be presided over by three legally qualified judges in the national divisions and, if relevant, also a technically qualified judge, if so requested by one of the parties or the UPC. Patent revocation actions will always be presided over by two or three legally qualified judges in addition to a technically qualified judge.

Who will be eligible to represent the parties before the UPC?

The parties to actions before the UPC must be represented by a representative who is authorised to practise before the UPC. It is not possible to be a litigant in person. A party's representative may be a lawyer in a country which participates in the UPC Agreement or a European patent attorney. The latter only, however, if he or she fulfils certain specific qualification requirements, including for example holds a European patent litigation certificate. A Danish representative may appear before divisions in other countries, in the same way as lawyers from other countries may appear before the Danish division.

However, a party will always be entitled to submit applications to opt out of the UPC system without being represented by a representative.

The requirements to European patent litigation certificates and other appropriate qualifications are laid down in the EPLC Rules (latest draft).

Will the UPC also have competence to hear applications for provisional measures in the form of preliminary injunctions?

Yes. Actions concerning provisional and protective measures, including preliminary injunctions, and preservation of evidence, seizure, freezing orders etc. also fall within the UPC's competence. However, with regard to traditional European patents, it will also be possible to opt out of the UPC system, see above, and there will also be a transitional period in which it will be possible to bring actions before the national courts in parallel with the UPC.

Which laws will the UPC apply?

The new patent system will largely mean a harmonisation of patent infringement rules in the UPC Agreement. Thus, the UPC Agreement contains a number of provisions on patent infringement, including direct patent infringement and limitation of patent rights. Those provisions will be applicable by the UPC, wherever the alleged infringement has occurred.

With regard to revocation, the UPC will largely have to base its decisions on the provisions of the European Patent Convention (EPC). This is particularly true if the claim for revocation is based on lack of novelty, inventive step or basis or on illegal extension.

In a number of cases, the UPC will have to apply EU law and national law. By way of example, EU law will be relevant for supplementary protection certificates, which are governed by EU regulations. National law, on the other hand, may be applied in connection with regulatory aspects of relevance to infringement and in connection with aspects concerning prior use.

What will be the procedure for preservation of evidence before the UPC?

The order to preserve evidence will be made by the UPC and the order will specify the scope of the procedure. The practical aspects of the procedure will largely be left to an appointed expert who must be independent of the party having requested the order to preserve evidence. This could be a national public official (such as a Danish enforcement officer from the Bailiff's Court), but this is not a requirement. Orders involving preservation of evidence in Denmark will most likely be carried out  in practice by an enforcement officer being appointed in addition to the experts to ensure compliance with Danish law. However, there is no guarantee that this will always be so. In English law, the persons carrying out orders to preserve evidence are lawyers (who must be independent of the party having requested the order). It is not inconceivable that some claimants may try to have other persons appointed to carry out the order than what would follow from Danish law.

Will licensees be entitled to bring an action?

As opposed to Danish law, licensees will generally not be entitled to bring an action. They only will if they are exclusive licensees. Non-exclusive licensees will only be entitled to bring an action if so agreed.

Is there a risk of the UPC establishing infringement of a patent before its validity has been established?

Yes. The UPC Agreement allows for bifurcation, which means that local divisions may refer a counterclaim for revocation in an infringement action to a separate procedure before the central division. However, there are a number of rules which seek to mitigate the effects. Most important in this connection is the rule that the relevant local division is not forced to refer the issue of revocation to a separate procedure before the central division, but may elect to hear both issues itself or refer both issues to the central division.

If the local division elects to refer the issue to the central division, it may decide to make a decision of infringement conditional on the validity of the patent being upheld, and it may also decide to suspend the entire infringement action pending the outcome of the revocation action.

It will also be possible for a decision on patent infringement to be delivered before a final decision is available from the EPO on the validity of the patent and its scope of protection. In such cases, the decision on infringement may be made conditional on the validity of the patent being upheld by the EPO.