Post-Grant Litigation Pathways for European Patents

IP News

Now that the Unitary Patent is available and the Unified Patents Court (UPC) is open for business, what does this mean in terms of jurisdiction, in respect of classically validated patents and unitary patents? The possible litigation pathways are illustrated by the diagram below.

When a European patent application grants, the Proprietor must decide whether to use the long-standing “classical” validation systems to obtain a bundle of independent national patents, or to request unitary effect in order to obtain a Unitary Patent, i.e. a single indivisible patent that covers all of the EPC member states that are signatories to the UPC Agreement and have ratified this. Often a combination of the two systems is needed, in order to cover all the EPC Member States of interest.

There has been some confusion between the Unitary Patent and the Unified Patents Court because of their similar names: the Unitary Patent is a patent litigated via the Unified Patents Court, whereas the Unified Patents Court is a court for litigating unitary patents but also some other European patents (classically validated).

Only the Unified Patents Court has jurisdiction over unitary patents.

For patents that are classically validated and are opted out of the jurisdiction of the Unified Patents Court, the National Courts have jurisdiction.

However, for patents that are classically validated but are not opted out (or where the opt-out has been withdrawn), jurisdiction is decided by where the first action is brought during the transitional period. In this period, actions can be brought in either the Unified Patents Court or the National Courts and jurisdiction remains with whichever is the court where the first action is brought, for the lifetime of the patent. If no action is brought during the transitional period, then the Unified Patents Court will have jurisdiction once the transitional period ends. The transitional period will last at least seven years, i.e. until at least 2030.

After the transitional period, the Unified Patents Court will have jurisdiction over both classically validated and unitary patents and it will no longer be possible to opt out.

For more detailed advice, our patent attorneys will be happy to help.

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