A guide to the UPC and the UP - Flipbook - Page 13
The Regulations are primary sources of EU law with direct effect in the Participating Member
States. By contrast, the UPCA as an international agreement, required ratification by the
Contracting Member States. At the insistence of the Commission, in May 2014, the Brussels
I Regulation (recast) was amended in order to regulate its relationship with the UPCA and in
particular to ensure that the Court would be deemed to be a court within the meaning of the
Brussels I Regulation (recast).
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The UPCA was signed on 19 February 2013 by all Member States with the exception of Poland
and Spain. 1 It was to enter into force after the later of: (1) 1 January 2014; (2) the amendment
of the Brussels 1 Regulation (recast) or (3) four months after thirteen Contacting Member States
had deposited their instruments of ratification with the General Secretariat of the Council of
the EU including the three Contracting Member States where the highest number of European
patents had effect in the year before the UPCA was signed which at the time was Germany,
France and the UK.
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Despite the result of the referendum in June 2016 when the UK voted to leave the EU, the
UK government announced in November 2016 that it would proceed to ratify the UPCA.
The process of the UK exiting the EU commenced when the UK triggered art.50 Treaty of
European Union in March 2017. Nevertheless, the UK duly proceeded to ratify the UPCA in
April 2018. On 20 July 2020, not unexpectedly the UK decided for political reasons to withdraw
from the UPCA. As a result of the UK’s withdrawal, Italy was substituted as the next higher filer
of patents at the relevant date. Italy (along with France) had already ratified the UPCA, so once
Austria as the 13th Contracting Member State had ratified it in January 2022, that only left
Germany needing to ratify it for it to enter into force. Germany duly did so on 17 February 2023.
As a result, the UPCA entered into force on 1 June 2023 and the two EU Regulations came
into effect on the same day. As at that date, 17 of the Contracting Member States had
ratified the UPCA.
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The UK’s withdrawal from the UPCA means that there will no longer be a local division nor a
section of the central division in London: cases the subject of which were originally allocated
to London are expected to be re-allocated to Paris or Munich pending the appointment of a
replacement section of the central division.
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For further information about the history and background to the Court system, tracing the
evolution of the ideas behind it, see “The New European Patent” by Alfredo Ilardi, 2 “The Unitary
EU Patent System”, edited by Justine Pila and Christopher Wadlow, 3 “Introduction to the
Unitary Patent and the Unified Patent Court” by Pieter Callens and Sam Granata, 4 and
“European Unitary Patent and Unified Patent Court” by Hugh Dunlop. 5
The New System: The Unitary Patent
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The Unitary patent will, in all respects, start out life as a European patent application for the
purposes of filing and prosecution, but within 30 days after grant by the EPO the patentee
will have the option to designate it as having unitary effect. In such a case, the Unitary patent
will provide uniform patent protection and equal legal effect in all the Member States which
have ratified the UPCA (Contracting Member States). So the Unitary patent, which is a European
patent with unitary effect, is derived legally and administratively from the EPC.
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In effect, there will be a third type of patent protection available in Europe, sitting alongside
European patents and national patents, both of which will continue to be available.
1
2
3
4
5
Croatia became a Member State on 1 July 2013 and has also not yet signed.
Ilardi A, “The New European Patent”, (Oxford: Hart Publishing, 2015).
“The Unitary EU Patent System”, ed. Pila J and Wadlow C (Oxford and Portland, Oregon: Hart Publishing, 2015).
Callens P and Granata S, “Introduction to the Unitary Patent and the Unified Patent Court. The (Draft) Rules of Procedure of
the Unified Patent Court”, (Alphen aan den Rijn: Kluwer Law International, 2013).
Dunlop H, “European Unitary Patent and Unified Patent Court”, (London: The Chartered Institute of Patent Attorneys, 2013).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 3
