Unified Patent Court Agreement

What does the Unified Patent Court (UPC) Agreement mean for your European patent rights? Questel’s experts offer practical advice on the pros and cons of the forthcoming Unitary Patent (UP) system, guidance on whether to opt-out of the UPC’s jurisdiction, and how our Orbit Intelligence software can help you build the right strategy for your organization. 

After many years of development, the UP and its associated UPC are expected to come into force in the coming months. This new patent system will have an immediate impact on your innovation protection strategy in Europe and the future direction of your patent portfolio. 

To support this process, Questel has developed a range of dedicated Unitary Patent tools and services to guide your decision-making. In this article, we analyze the upcoming changes and explain how Orbit Intelligence, Questel’s patent search and analytics tool, can help you navigate them effectively. 

Adopting a clear strategy now will help you maintain the value of your portfolio in light of the imminent UP and UPC launch. Don’t wait—Questel is ready to provide advice and support every step of the way. 

Unified Patent Court Agreement: What You Need to Know 

The European patent with unitary effect (the Unitary Patent) is the culmination of years of European efforts to create a centralized patent-granting system covering EU member states that have signed the Unified Patent Court Agreement (UPC or UPCA). 

As explained in our Unitary Patent eBook, the pre-grant phase for Unitary Patents operates the same way as the current procedure at the European Patent Office (EPO). However, after grant, the patent holder can request “unitary effect”, obtaining a Unitary Patent that provides uniform protection across all participating EU states. 

Upon grant, the patent owner has two choices: 

1. Proceed with the current national validation system, creating separate rights in each country.  
2. Request unitary effect for broad, streamlined protection in the territories covered by the Unitary Patent.  

Advantages of the Unitary Patent: 

• Reduced costs compared to multiple national validations, with broad territorial coverage.  
• Simplified procedures, including reduced translation requirements and a single annuity fee.  
• Access to a uniform jurisdiction via the UPC, promoting consistent case law and increased legal certainty.  

Potential Risks: 

• Vulnerability to a central revocation action in a single court, which could invalidate the patent across all UPC states.  
• Initial lack of substantive and procedural case law, creating some uncertainty.  
• Litigation costs may be higher than pursuing a single national court action.  

Choosing whether to opt for unitary effect or stick with national validations requires careful strategic consideration, balancing cost savings, risk, and long-term portfolio value. 

Find out more about the new European patent right, including the pros and cons of filing under the Unitary Patent system, by downloading our Practical Guide to the Unitary Patent or reading our article “Getting ready for the Unified Patent Court system.” 

During a seven-year transition period, potentially renewable for another seven years, the patentee must decide whether to opt-out from the UPC jurisdiction, regardless of whether the patent follows the classic validation route or the Unitary Patent route. Here, the clock starts ticking. 

Key Decision: Opting Out 

One of the first decisions for rights holders is whether to opt-out existing and pending European patent and SPC rights from the UPC system. Ideally, this should be done during the Sunrise period—a three-month window before the UPC and Unitary Patent go live. By lodging opt-out applications during this period, rights holders can avoid the risk of a central invalidity action under the UPC once the new system is operational. 

For further details about opting out of the UPC system, download our ebook “Opting out from the jurisdiction of the UPC.” 

Should You Opt-Out Your European Rights? How IP Analytics Can Help 

IP analytics can provide the insights needed to guide your European patent strategy, using a combination of internal and external indicators: 

Internal Indicators 

• Consider the profile of your company and the purpose of your portfolio: Is it intended for partnerships, defense, or market offensives?  
• For portfolios designed to be aggressive, it may be more valuable to remain within the UPC system, as this can deliver direct, global impact. This decision is strengthened if your ability to oppose and defend your patents is strong. 

The next step in your decision-making is to assess the market in which you operate, including its size and the territories relevant to your portfolio.

• In certain sectors, the market may be particularly aggressive, with higher litigation risks. For example, the pharmaceutical sector is known for frequent disputes. In such cases, choosing to “opt-out” may be a prudent strategy to avoid losing a patent across all UPC countries in a single opposition procedure.
• Portfolio size and composition are also critical considerations. Key factors include:
  • Patent status (granted, pending, or expiring)
  • Patent age
  • Economic value of the patent

A patent with high economic value requires stronger protection, making “opt-out” potentially more appropriate.

By combining insights at the company, portfolio, and market level, you can create an initial overview for each patent within the UPC system, helping to guide your unitary patent strategy.

External Indicators 

Once your internal evaluation is complete, your strategy can be strengthened through a more in-depth analysis using IP analytics. Tools such as Questel’s Orbit Intelligence provide rapid, focused, and comprehensive access to the information necessary for informed decision-making. 

With Orbit Intelligence, you can quickly perform: 

• Comprehensive patent analyses, including freedom-to-operate and patentability searches  
• In-depth competitor portfolio reviews  
• Extensive market analysis with graphical visualizations  

In addition, Orbit Intelligence offers access to a vast database of patent and non-patent literature, including clinical trials, research projects, and scientific documents. The platform also provides reliable legal status information for patent families worldwide, along with full-text translations. 

Other valuable data include: 

• Litigation records  
• Oppositions  
• Licensing agreements  
• Standards compliance  

Accessing Key Information with Orbit Intelligence 

The essential information on Orbit Intelligence is available at the patent family level, both directly in the search results and via analysis tools or guided activities. 

By accessing a patent family, you gain direct insight into its legal status—including ongoing litigation or opposition and the outcomes of past events. This data is critical for assessing portfolio strength. 

Orbit Intelligence also provides access to: 

• Backward and forward citations  
• Documents cited by the examiner (categories X, A, and Y)  

For example, a widely cited patent may be considered decisive for its technological field, potentially justifying a decision to “stay in” under the UPC system. 

In addition, Orbit Intelligence allows you to analyze competitors’ portfolios, including: 

• Geographical distribution  
• Active countries in your field of expertise  

For instance, if many competitors operate in common territories, a more cautious approach may be warranted, and opting out could be considered. 

The platform provides over 45 metrics—scores and indicators to position your portfolio in the market and compare it with competitors. Examples include: 

• Originality score of a patent  
• Patent strength  
• Technical impact  

By comparing these metrics, you can evaluate patents using multiple parameters, guiding your opt-out decisions effectively and strategically. 

When performing a portfolio comparison, a very strong, original, and widely cited patent often leads to a decision to “stay in” under the UPC system. 

Questel and Orbit Intelligence can further support your decision-making by providing comprehensive insights into your patent families as well as those of your competitors, helping you make data-driven choices. 

 Unified Patent Court Agreement: Next Steps 

Deciding whether to “opt-out” your European Patent (EP) rights from the Unified Patent Court (UPC) jurisdiction requires careful consideration. 

Questel and Orbit Intelligence not only provide the IP analytics to inform your decision but also offer a dedicated service team to: 

• Assess the opportunities and risks of the UPC  
• Support your European patent strategy  
• Advise on the potential business impact in Europe  

For tailored guidance, explore our dedicated Unitary Patent solutions or contact us today for tailored advice and support