As you may have heard, there is now a strong likelihood that the Agreement on the Unified Patent Court (UPCA) will enter into force very soon, maybe even by the middle of 2022. Therefore, it may now be necessary for you to consider how to proceed in this new legal system. This system introduces the biggest changes to patent practice in Europe since the European Patent Convention (EPC) came into force. It will provide consolidated patent litigation in Europe, for the first time.
The main changes introduced by the new legal system are:
- A European Patent with Unitary Effect (Unitary Patent) for the states participating in the UPCA. Based on a granted European patent (EP), a Unitary Patent can be requested before the EPO within 1 month from the publication of the grant. At present, 16 EPC states are participating in the UPCA, i.e., AT, BE, BG, DE, DK, EE, FI, FR, IT, LV, LT, LU, MT, NL, PT and SE. The traditional European patent system will continue to apply for non-EU and otherwise non-participating EPC member states such as UK, CH, ES, PL. A traditional European patent will still be available in UPCA participating states if no request for a Unitary Patent is filed.
- The creation of a court, the UPC, which has jurisdiction within the territory of the UPCA for infringement and validity actions concerning Unitary Patents, but also for traditional European patents, if these are not “opted out” of the system.
During a three-month “sunrise” period before the UPCA enters into force, holders of granted traditional European patents and EP applications will be able to “opt out” of the jurisdiction of the UPC in advance, on a case-by-case basis. This is particularly important to avoid the risk of a central revocation attack on granted European patents via the UPC as soon as the new system comes into force. Such attacks, potentially putting European patents at risk in many countries at once, will be possible under the new system, because, by default, the UPC will have jurisdiction to revoke or enforce all existing European patents across the territory of all UPCA participating states. National patents granted by national patent offices are not affected.
Therefore, for patent holders wishing to avoid such a risk for specific traditional European patents, it is important to “opt out” such patents from the UPC jurisdiction actively, before the UPCA enters into force (i.e. during the “sunrise period”). By opting out, the traditional European patent would remain subject to the current regime of multiple separate and different national court systems. It is possible to withdraw the opt-out once during a transitional period of at least 7 years.
The UPC will also have jurisdiction for supplementary protection certificates (SPCs), if the opt out is not declared for the corresponding European basic patent.
To help you understand the current status, upcoming events, and some of the finer details of the new UPC and Unitary Patent on a general, introductory level, we have prepared the following publications:
We are also planning a webinar to help guide you through this very interesting and indeed exciting new legal system in Europe, and we will keep you informed as to when this will take place.
We will keep you informed of further developments, in particular the dates on which the “sunrise” period and, subsequently, UPC operations will begin. We will also continue to provide general guidance to help you to safeguard existing European patent protection and develop effective enforcement strategies in this new system.
We now recommend that holders of European patents and applications review their portfolios to decide which patents to opt out of the system. We will of course be available to assist in this process.
In the meantime, please do not hesitate to contact us with your questions.