26 EU Member States participated in the enhanced cooperation procedure to establish the unitary patent (including the UK). However unless these states have also ratified the UPCA then the unitary patent (UP) will not be effective in their jurisdictions (aside from the issues surrounding the measure applying in a state that leaves the EU). Poland has participated in the UP but have not signed the Unified Patent Court Agreement (UPCA) and so the UP will not have effect there, nor will it apply to Croatia or Spain which have still not signed the UPCA or participated in the UP.
See the table produced by the Council of Europe which shows which have signed and which states have then ratified (with dates) the UPCA. Since no non-Member State countries are able to take part in the UPCA on its current drafting, the UP will not extend to all EPC countries in relation to which it is currently possible to request EP designations.
EU Member States where the UP will not apply (given the current state of UP participation and UPCA ratification):
- Spain – has declined involvement in UP or UPC and has challenged the use of the enhanced cooperation procedure to establish the UP and the language regime at the Court of Justice of the European Union which rejected both attempts (see our IP e-bulletin of 5 May 2015 on the CJEU's decision to reject the latest challenges). On 1 October 2015, Italy became part of the enhanced cooperation to create the UP (having previously challenged its legitimacy at the CJEU (heard with Spain's first challenge application)) and has already signed, although not yet ratified, the UPCA.
- Poland – participated in enhanced cooperation establishing the UP but has said it will not sign the UPC (for now), thus a UP will not be enforceable in Poland since enforcement can only occur via the UPC.
- Croatia – has not agreed to the UP enhanced procedure or signed the UPC Agreement. However Croatia only joined the EU on 1 July 2013 so it may well catch up with these agreements soon. There is no suggestion that it has any particular objections to the UP/UPC system.
- The UP will also not apply in EPC member states which are not eligible to be signatories of the UPC Agreement, although they are European Patent Convention signatories and are options for designation under the EP – Norway, Turkey and Switzerland (and in due course, the UK).
- Late joiners to the EPC – European patents applied for before 2008 (for Croatia) and 2007 (for Malta) which are coming up to grant will not be able to extend to those states as they were not signatories to the EPC when the applications were made. Thus if a UP is requested when such applications come to grant, it will not be possible for it to cover these states even when Croatia has signed the UPCA and participated in the enhanced cooperation for the UP (Malta has signed the UPCA and agreed to the UP enhanced cooperation).
The contents of this publication are for reference purposes only and may not be current as at the date of accessing this publication. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication.
© Herbert Smith Freehills 2020