Should your company participate in the joint patent court?

The new joint patent court and unitary patents

Unifies Patent Court (‘’UPC’’) is a new joint patent court that will have exclusive jurisdiction over legal proceedings concerning the validity and offence of future unitary patents where there has not been an active opt-out of the UPC agreement.

Today, a European patent is issued by the European Patent Office and is a collection of national rights validated and maintained in several designated countries.

With the unitary patent, it becomes possible to obtain a patent covering most of Europe (except for Poland, Spain and Croatia, which have opted out of the agreement). This means that the unitary patent will take effect in all participating member states, where it is no longer needed to validate the patents in the individual countries where it must be in force.

Possibility for opt-out

While it is clear, that UPS will have jurisdiction over the unitary patents, the UPC will also have jurisdiction over existing registered or applied, European patents, unless the patent holder actively opts out of participating in the agreement – i.e., an opt-out agreement. In principle, out-out can take place at any time within 7 years from the beginning of the transition period. The transition period is currently set to take effect on 1. January 2023.

However, there is an important exception to the opt-out option: If a case has been filed with the UPC about invalidity and offence, a patent holder can no longer opt out of the agreement. In practice, this means that a competitor can force a patent holder to enter into the agreement if the competitor takes legal action.

Offence cases at the new joint patent court

UPC has several national and regional departments, including a national branch in Denmark and a regional branch in Sweden. A case for UPC will address offence or validity in all member states or designated countries. An offence case can, for example, be filed where the alleged offence took place, but will include offences and compensation in the entire area where UPC has jurisdiction. This is a contrast to the situation today, where offence cases must be brought as a matter of principle in all the national courts where the alleged offence occurs.  

This means that a case at the UPC can have far-reaching consequences for patent holders.

The new case procedure at the UPC

It is also important to note that the case procedure at the UPC differs significantly from the Danish procedure on several points.

It is intended that cases at the UPC in the first instance must be decided within a year, which in patent contexts is extremely fast. This puts great demands to the case preparation, where the plaintiff must present his full evidence in the summons, including any expert statements etc. Within 3 months, the defendant must file a defence, where the defendant must present his full defence including expert statements. This obviously places great demands on the defendant, especially if a case is initiated during a traditional holiday period.

As a company, you should consider whether significant competitors and their patens must be identified and qualify the risk of legal proceedings.

Lund Elmer Sandager comments

While you cannot control whether you are subpoenaed by UPC, you as a patent holder can decide for yourself whether you want to actively participate in the agreement. As a patent holder, we recommend you review your existing portfolio and identify risks and opportunities with the UPC agreement. At the same time, you should analyze and monitor your competitors’ patent portfolios so that you can defend yourself and offensively exploit the opportunities for a central attack against a patent.

If you have questions about the new joint patent court UPC or other questions about patents, contact lawyer Jimmy F. Christensen from our IP and marketing team.