Alexander Ramsay, the Chair of the Preparatory Committee, on the UPC latest developments:

Alexander Ramsay, the newly elected Chair of the Preparatory Committee and Deputy Director at the Division for Intellectual Property and Transport Law Ministry of Justice in Sweden,  talks about the latest developments of the Unitary Patent package in an interview published on 15/12. Here is a summary of the activity of the Preparatory Committee and the last steps that must be taken before the entry into force of the UPCA:

Introduction date of the Unitary Patent Package:

The Preparatory Committee is trying to conclude its preparatory work by mid-2016. This will then be followed by “a period of provisional application of at least 6 months where after the UPC Agreement can enter into force and the Court become operational. However to start provisional application 13 Member States, including France, Germany and the United Kingdom, will need to ratify or at least get parliamentary approval to ratify the Agreement.”

Latest development of the UPC: 

  • The Rules of Procedure were agreed, but will need to be amended when the Committee agrees on court fees and the ceilings of the recoverable costs.
  • The Committee conducted a consultation on the court fees and the ceilings of the recoverable costs and is now considering the outcome and working on an adjusted proposal. 
  • Development of IT is on track. IT system will start to be “tested, fine-tuned and adjusted” in the beginning of 2016.

Costs and Fees: 

  • The Preparatory Committee “is likely to be able to conclude its work in December 2015 on the level of the renewal fees, the distribution of income from the renewal fees and the implementing rules“.

Protocol on the provisional application of the UPCA: 

  • The provisional agreement on the UPCA will allow for the organisation and all the formal organs of the Court to be formally established.
  • This will allow for all decisions to be taken “in the good order prescribed by the Agreement, e.g. employ judges, form a Presidium and elect the two Presidents”.
  • It will also allow the judges to prepare and test run all the systems  before the entry into force of the Agreement.
  • Finally,  it will also be possible to file opt-outs at the Registry. The opt-outs will therefore be effective from the first day of the entry into force of the Agreement.


The overview of the 13th meeting of the Preparatory  Committee can be seen here.

The secondary legislative framework necessary for the implementation of the UPC adopted by the Select Committee

The Select Committee adopted on 15/12/15  a series of agreements necessary  for the implementation of the Unitary Patent package:

  • The Rules relating to Unitary Patent Protection,
  • The Rules relating to Fees for Unitary Patent Protection,
  • The Rules relating to the distribution of fees amongst the participating Member States,  
  • The Budgetary and Financial Rules.

The Committee has therefore now put into place a comprehensive and complete secondary legal framework for the unitary patent, which will allow for the implementation of the Unitary Patent package.

As the EPO President Benoît Battistelli declared, the legal far: “This is a hugely significant occasion for the European patent system. With the adoption of these rules today, the preparations for the unitary patent are complete. We are now legally, technically and operationally ready to deliver the unitary patent. The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs.

As a reminder: The Unitary Patent system and the Unified patent Court will only come to life once thirteen states, including France Germany and the UK, have ratified the Unified Patent Court Agreement. So far eight states, including France, have ratified. See our posts on ratification here.

Distribution key of the renewal fee income adopted by the EPO:

On 17th November the European Patent Organisation adopted the distribution key for the repartition of the 50% share of the participating Member States in the renewal fee income among them.

In fact while the EPO retains 50% of the renewal fee income, its Select Committee had to decide how the apportionment of the 50% share of the Unitary patent renewal fees would be apportioned amongst the participating EU Member States.

According to Bristowsit has been agreed that for an initial period of operation the 50% of the fees (minus an administrative charge) will be distributed according to a formula that takes account of the GDP and the number of applications filed from each participating Member State.

The Select Committee…an update on its work programme

Who is the Select Committee and what is its function?

The Select Committee is established under the European Patent Convention. It consists of all the EU Member States participating in the enhanced cooperation. The European Commission, Business Europe, the European Patent Institute and other EPC Member States that are not participating in the enhanced cooperation have received the status of observers.

The Select Committee has -among other things- been given the task to govern and supervise the activities of the EPO relating to the UPC. An important task during the preparatory phase will be to fix the level of the renewal fees for European patents with unitary effect.

Since its first meeting on 20th March 2013, the Select committee has been regularly meeting and publishing communiqués. It appears from its “updated timeline” published by Bristowsupc that after focusing on institutional matters such as its creation, composition and adoption of its rules of procedure, the Select Committee is now looking at substantive aspects and notably legal, financial and budgetary issues.

What are the legal issues that it must address?

After reviewing in June, September and December 2013 the first Draft Rules for the Unitary Patent Protection, it is now reviewing the second Draft. These Draft Rules relate mainly to the procedures that will be administrated by the EPO in carrying out the tasks that the Participating Member States will entrust to the EPO in accordance with article 9.1 of the EU Regulation N° 1257/2012.

In June 2014: The Committee adopted in principle the Draft Rules relating to Unitary Patent Protection, with the exception of some technical aspects that require further discussion.

What are the financial and budgetary issues that it must address?

The financial and budgetary aspects of the implementation of the unitary patent protection concern mainly the level and the distribution of the renewal fees, the budgetary aspects of the tasks entrusted to the EPO in accordance with Article 9.1 of the EU Regulation N° 1257/2012 and the implementation of the compensation scheme for the reimbursement of translation costs referred to in Article 5 of EU Regulation N° 1260/2012.

In October 2013 a first meeting of the Select Committee was held to start discussions on the financial and budgetary aspects of the implementation of the unitary patent protection. During this meeting statistical and financial information were  presented to the Select Committee.

In March 2014:The Committee adopted the rules relating to the compensation scheme for costs for translations of applications filed in an EU official language which is not one of the official languages of the EPO, the reimbursement of which is available to patent holders obtaining a European patent with unitary effect. However, the financial aspects of the compensation scheme, including the amount to be compensated, will be discussed at a later stage.” (7th meeting of the Select Committee of the Administrative Council of the European Patent Organisation (Munich, 26 March 2014))

In June 2014: If the Committee adopted the draft rules relating to the Unitary Patent Protection, however it did not agree on the level of renewal fees which will have to be fixed by the participating Member States in the Select Committee in October 2014.


The “Enhanced European Patent” or some long-waited-for answers on the Unified Patent Court and the Unitary Patent by the Select and Preparatory Committees.

The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.


The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note.  It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.


Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect.  However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)


The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)


The Geographical extension of the Unitary Patent:

The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent.  In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).


The UPC general competence:

On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).

The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement.  The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.


The Transitional period: (For background information on the transitional period see here) 

The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect.  The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.


The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.”  In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.


It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.


You can of course look at the UPCA here and the draft rules of procedures here.


The Preparatory Committee

 Who is the Preparatory Committee and what is its function?

The Preparatory Committee is composed of all the Signatory States to the Unified Patent Court Agreement document 16351/12, of 11.01.2013. Poland, the European Commission and the EPO have observer status. Its objective is to prepare for the establishment of the UPC in order for it to be operational once the UPC Agreement enters into force. The Preparatory Committee will exist until the Court is established. Currently this is expected to last two years and during this time it has its own rules by which it is governed. You can find the rules here. Its work programme is set out in a Roadmap.

The Preparatory Committee has identified five major work streams; Legal Framework, Financial Aspects, Human Resources/Training, IT and Facilities. Each work stream has been assigned to a specific working group which have been given the task of preparing proposals to the Committee where all decisions are taken.

The Preparatory Committee is chaired by Mr Alexander Ramsay -from Sweden who is assisted by the vice-Chairman, Louise Akerblom -from Luxembourg- and the Head of Secretariat Eileen Tottie -from the United Kingdom.