News Flash: Romania joins the UPC

Posted on June 06, 2024

Romania joins the UPC

As the Unified Patent Court (UPC) celebrates its first full year of operation, Romania has been confirmed as the 18th member state to ratify the UPC Agreement. From 1 September 2024, jurisdiction of the UPC will extend to Romania, and any Unitary Patent (UP) having a date of registration of unitary effect from 1 September 2024 onwards will additionally cover Romania.

What is the UPC?

The UPC is a new court which opened on 1 June 2023 and has jurisdiction in certain EU states referred to as “participating states”. The initial list of participating states was: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. Over time, it is expected that other EU states will also become “participating states”, Romania being the first additional state to do so. Non-EU states, such as the UK, cannot join.

The UPC can pass judgement on the infringement and validity of European patents in the participating states. The court has the power to grant patent owners remedies including damages and injunctions across all participating states in the case of patent infringement, and to revoke European patents across all participating states if a patent is found to be invalid.

What is the “Unitary Patent”?

Following grant by the European Patent Office (EPO), European patents need to be validated in respect of each individual state in which patent protection is required. Protection can be secured in up to 43 states, including 38 contracting states of the European Patent Convention (EPC) and up to five extension states.

Prior to creation of the Unitary Patent, validation typically involved the appointment of a local agent and in some cases involved filing of a local language translation. Renewal fees must be paid each year in each state in order to maintain protection in that state.

Now, for the UPC participating states, a new option is available – validation “with unitary effect” to obtain a “Unitary Patent”. In practice, the Unitary Patent is a single right covering all states participating in the UPC as of the date that unitary effect is registered. This validation “with unitary effect” requires only the filing of a single translation, and there is no need to appoint a local agent in each participating state. Furthermore, to maintain the Unitary patent in all those participating states, only a single renewal fee will be payable each year.

For more information contact your Abel + Imray attorney or visit the UPC section on our website: European Patents and the Unitary Patent System