UPC Hub

Representing you at the UPC

Our expertise is your advantage 

The UPC represents the most significant change to European IP law in five decades. At Carpmaels & Ransford, we help clients navigate the UPC and the wider European patent system with integrated, technically-focused teams. 

More than 50 Carpmaels attorneys are actively involved in UPC litigation and related advice, supported by wider teams advising on UPC strategy. We have more than 80 qualified UPC representatives and over 30 litigators with experience across national and UPC litigation. 

We use integrated teams to handle parallel disputes in the EPO, UPC, UK and German courts, while also coordinating national actions across Europe. Where our European patent attorneys are opposing third party patents, we are ready to launch parallel nullity actions at the UPC and defend our clients against any infringement claims. This approach is particularly important given the compressed timelines of UPC proceedings, where continuity between those drafting and prosecuting patents and those litigating them can be critical to a successful outcome.   

We have expanded our presence in Germany, and our litigation team includes German, French and Dutch litigators. This allows us to staff UPC matters with multilingual teams with deep expertise in the laws and procedural practices of the major European patent-litigating jurisdictions that contributed to the development of the UPC. Our teams have led cases in the Munich, Düsseldorf and Paris Local Divisions and in the Munich and Milan branches of the Central Division, as well as at the Court of Appeal. 

Carpmaels has handled some of the most highprofile, technically complex and valuable cases before the UPC, including leading the first ever UPC revocation action at the Central Division and the first UPC case involving a supplementary protection certificate (SPC).  

If you would like to discuss strategic or practical considerations relating to UPC litigation, please contact your usual Carpmaels contact or a member of our litigation team. 

UPC Opt-Out Audit and Correction

Verifying and securing opt‑out status 

The UPC has exclusive jurisdiction over patents registered as Unitary Patents. During the initial transitional period of seven years, however, classic European patents are subject to the jurisdiction of both the UPC and national courts, unless they are validly opted out of the UPC system. 

Securing a valid opt‑out is critical for rightsholders who wish to remain within the traditional, state‑by‑state European patent system. The opt‑out process is procedurally complex and subject to strict legal requirements. Errors can result in an opt‑out being invalidated, with the consequence that the relevant patent applications, patents or SPCs fall within the UPC’s jurisdiction. 

It is possible to correct opt‑out requests after filing, provided this is done correctly. Carpmaels & Ransford offers a full auditing service for rightsholders wishing to verify the status and validity of opt‑outs, whether in relation to their own portfolios or third‑party patents.  

Having filed thousands of opt‑out requests, we are well placed to audit opted‑out portfolios, assess opt‑out validity and assist with correction where required. Our services draw on integrated teams of patent attorneys, litigators and transactional specialists. 

The New UP vs Classic EP

The Unitary Patent 

The Unitary Patent (UP) is a single patent providing uniform protection across all participating EU Member States. It is available with almost no translation costs and has a single, relatively low, renewal fee. This offers the potential for substantial savings, especially where patent protection across most of Europe is desirable. 

UPs are granted by the EPO following the existing procedure for ‘classic’ European Patents (EPs). The choice between a UP and classical EP validations can be made after the intention to grant under Rule 71(3) is issued. Requests for unitary effect must be filed no later than one month after the mention of the grant in the European Patent Bulletin. 

A UP has unitary effect across all participating member states of the EU that have ratified the UPC Agreement (currently 18). The territorial scope of a UP is fixed on grant and remains limited, for its lifetime, to those member states that had ratified the UPCA at the time of grant. 

The UP is an alternative to classical EPs, which remain available from the EPO for all 39 contracting states. Where protection is required in countries outside the UP landscape, a combination of a UP and classical EP validations may be needed.  

Aside from the cost considerations, users need to be aware that the choice of the UP automatically carries with it the choice of the UPC. All UPs are subject to the exclusive jurisdiction of the UPC and there is no possibility of opting out of the UPC if a UP is chosen. The benefits and risks of participation in the UPC should therefore be borne in mind in any decision regarding whether or not to choose the UP as an alternative to the EP in those participating Member States.  

The UP also creates new issues to consider in any transfer of rights. 

What is the UPC?

 The Unified Patent Court 

The UPC has exclusive jurisdiction over Unitary Patents (UPs), providing a single forum for pan-European infringement and revocation. The UPC’s jurisdiction also extends to all EPs already granted by the EPO, unless an opt out is filed. An opt out keeps the EP in the classic system, in which litigation must occur state-by-state in the national courts. 

The potential for injunctive relief across the UPC territory, without having to litigate country-by-country, has made the court an increasingly important venue for European patent litigation, and an important pillar of patent owners’ global patent litigation strategies. 

Recent landmark rulings asserting the UPC’s jurisdiction over pre-UPC acts of infringement, and extending its jurisdiction to non-UPC EPC countries following the CJEU’s ruling in BSH v Electrolux, have further increased its appeal to patentees as a single powerful venue for patent enforcement. 

An international court drawing on established legal traditions 

The UPC offers a number of opportunities for patentees and other parties. In particular, a patentee can seek enforcement (including a preliminary injunction) through a single court system in all participating Member States, and a defendant can deal with all issues in one counterclaim or revocation action. Before 1 June 2023, the only mechanism for central revocation of a patent was via an EPO opposition, which is only available for a nine month period following grant. After the opposition period expired, a litigant had no option but to commence revocation actions in multiple national courts. 

The UPC aims to offer rapid decisions. The preamble to the UPC Rules of Procedure notes that proceedings are conducted such that the final oral hearing on issues of infringement and validity at first instance should typically take place within one year. The UPC sets aggressive deadlines to achieve this target, and expects rapid responses by parties to proceedings. 

In practice, decisions are typically handed down within about 15 months, broadly in line with the UPC’s targets. Nevertheless, increasing caseloads have meant that popular divisions are in some cases scheduling cases on longer timelines. 

The UPC comprises the Court of First Instance, based in a number of locations and divided into Central, Local and Regional Divisions, with appeals heard by the Court of Appeal in Luxembourg.  In addition, the Court of Justice for the European Union (CJEU) has limited jurisdiction to hear questions on EU law referred by the Courts of First Instance or the Court of Appeal in Luxembourg.  

Each panel of the Court of First Instance and of the Court of Appeal comprises judges from a mix of national backgrounds, and all divisions have the power to make decisions covering all participating member states in respect of the patent in dispute.   

Infringement cases are generally heard at the Local or Regional Division where the infringement occurred, or the Local or Regional Division where the defendant (or one of them) has a place of business, or the Central Division if the defendant is domiciled outside the EU. Revocation proceedings or declarations of non-infringement are generally heard at the Central Division, or the division where existing infringement proceedings are pending, if applicable. The UPC Rules set out a single procedure to be followed for all actions, whether before the Central, Regional or Local Division, or the Court of Appeal. 

Since there is one set of proceedings (rather than multiple national proceedings as in the classic EP system), only one set of costs is incurred. The losing party is obliged to pay a portion of the other party’s costs, something common in the UK but unusual at the EPO and across much of Europe.

Further information on UPC law and procedure is available in our UPC Guide.

The Carpmaels Unified Patent Court & Unitary Patent Guide

Carpmaels has been representing its clients before the UPC since its inception. Our team has distilled our key insights into the Carpmaels UPC & UP Guide, a resource to help you navigate the new system with confidence. 

Inside, you will find practical advice and analysis on: 

• The law and procedure of the UPC
• UPC case filings and outcomes
• Healthcare cases at the UPC

Register now to access the guide 

Carpmaels UP & UPC Guide

If you would like any further information about our UPC capability, please contact us on [email protected]. 

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.