It has been almost a decade since 25 EU Member States signed the Agreement on a Unified Patent Court. Delays from the UK exiting the EU and constitutional complaints filed in Germany caused an uphill battle, but finally, preparations are underway for the common patent and a common patent court.
Where are we?
For almost 50 years, European governments have tried to come together over the idea of a unitary patent. When Austria deposited its instruments on January 19 and ratified the protocol for the provisional application of the UPC Agreement – the process towards a Unitary Patent system entered a new phase.
Preparations for the Unified Patent Court are currently underway, including judges’ selection. Germany is acting as a gatekeeper, ratifying the Unified Patent Court Agreement only once the preparation phase is over. Once Germany ratifies, the Unified Patent Court and the Unitary Patent can officially commence. There has been no official date for the UP package to go live, but qualified speculations are currently looking at between fall 2022 and the beginning of 2023.
Two Prongs of the UP System
The Unitary Patent
The Unitary Patent has been portrayed as the patent to rule them all, but tasks remain. Once Germany has ratified, a patentee requesting unitary effect for its European Patent would receive protection in 17 EU member states through that single request.
Further EU member states may be added with the possibility to accede to the UP system after the package goes live, and the Unitary Patent will have differing coverage over time. Only Spain, Poland and Croatia have expressed a clear no-participation in the system.
A request for unitary effect does not preclude the applicant from validating the European Patent in member states which have not ratified the UPC agreement. As the UP package is exclusive for EU member states, the Unitary Patent does not prevent a European patent proprietor from using the classical validation scheme in the countries outside of the UP system.
The Unified Patent Court
The Unified Patent Court will be the common court for litigating a Unitary Patent and eventually have exclusive competence for civil litigation related to European Patents. The UPC will have competence over a European Patent validated in a state that has ratified the UPC agreement. The UPC’s ruling will hold in every country that has ratified the UPC agreement, making both revocation and infringement actions a pan-European affair. However, the Unified Patent Court will not have jurisdiction over national patents.
Are you in, or are you out?
The most important message is that all European Patents will fall under the jurisdiction and system of the UPC once it becomes operational. However, the UPC will be subject to a transitional period of seven years during which a patentee can opt-out of its national validations of a European Patent – but not a patent with unitary effect – from the UPC.
The possibility of opting out is available three months before the UPC becomes operational – often referred to as the ‘sunrise period.’ If a patentee decides to opt-out of the European validated patents, they will continue to fall under the competence of the national courts where they are valid. The patent proprietor must notify the UPC registry for every single patent individually to opt-out.
A proprietor can only opt-out if no action has been taken towards the patent in the UPC. The sooner a decision is taken on opting-out, the better to ensure control over the patent litigation venue. Proprietors who opt out can opt-in again, assuming there has been no action against the patent before a national court.
The Unitary Patent and the Unified Patent Court will significantly impact the patent system in Europe, and this change is just around the corner. For proprietors of European patent applications or patents, it is time to inventory your IP portfolio and strategize whether your patents are more suitable for the classic or the new UPC system.
There are several advantages and pitfalls with the addition of the UP System. It can expose your portfolio to risks and open it to new offensive possibilities against your competitors. There is no one-size-fits-all solution. The optimal solution will be unique for each company depending on portfolio size, national coverage, portfolio age, business plan, and other strategic matters.
Early consultation and strategic risk assessment can provide your company with a golden opportunity to get ahead of the curve. At AWA, we are ready and eager to assist you with these critical decisions.
We also have a specialised and technically competent litigation team ready to assist our clients before the Unified Patent Court.
Please reach out to your usual contact at AWA with any questions on the Unitary Patent.