News updates on Unitary Patent
Following the appointment of the UPC judges and the steady progress of preparations along the roadmap as published by the UPC Preparatory Committee in October 2022, the new system is now set to start on 1 June 2023. This means that it certain changes and options will require your attention and, possibly also, actions already in spring 2023.
The Unitary Patent: a single patent covering all participating states
The UP will be a single patent right covering all of the EU member states participating in the project (currently 17 states are confirmed. These are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden). UP will be subject to payment of a single renewal fee and will require only one translation, potentially leading to substantial cost savings, especially if you would consider to validate your European Patent in more than 3 or 4 of the participating states. The UP option will become available for the currently pending European Patent applications that will be granted after the start of the system on or after 1 June 2022. However, already from 1 January 2023, the applicants will have the option to request a delay in issuing the grant decision and/or to file an early request for a Unitary Effect in order to be able to benefit from this change in case their European patents would be granted before the UP option becomes available. For other EPC territories that do not participate in the new system (Spain, Poland, Croatia) or cannot participate in the system because of not being part of the EU (e.g. UK, Switzerland, Turkey etc.), the classical validation path does not change and will remain available in parallel to requesting the Unitary Effect.
The Unified Patent Court: central enforcement and revocation in Europe
The UPC is a new patent court that will eventually have exclusive competence for disputes relating to infringement and validity of all European patents, potentially in all EU states in the future.
Rulings of the UPC will have effect in the territories of all member states participating in the project, providing an opportunity for central enforcement of patent rights in Europe, but brining about the risk of central revocation at this newly created forum.
The UPC will be the only court competent to hear disputes related to UPs. Consequently, it will have exclusive competence for this new patent type.
However, during an initial transitional period of 7 years, the UPC will share competence with the national patent courts over the existing traditional European patents (granted and validated as a bundle of national patents). The choice of the competent court for these traditional “bundle” European patents will be determined by the place of the first court action. Hence, a first court action started before a national court will determine that a given bundle of patents validated from a specific European patent will remain in the competence of the national courts (like it is now, under the current system). Conversely, if a first court action is started before the UPC, the “bundle” will become locked within the competence of UPC.
Consequently, the patent proprietors who are worried about this new forum and do not want 3rd parties starting actions before the UPC against their classical “bundle” European patents may expressly opt these patents out of the new system by filing an “Opt-out application” (or, simply “opt-out)”.
Opt-outs can be filed at any time till the end of the 7 years transitional period and for as long as no court action has been filed determining the competent court.
Your strategy
The decision on whether to participate in the new system, and the extent to which you do so, depends on several considerations, including:
- the cost of a Unitary Patent ;
- the number of countries you wish to cover;
- the strength of your patent(s) ; and
- whether you would like to file an opt-out from the competence of the UPC.
Choice to be made for your existing "bundle' European patents:
On the first day the UPC opens its doors, it will be ready to accept cases related to the classical “bundle” European patents. If you do not wish to have your “bundle” European patent within the UPC’s competence, it is recommended to file the opt-out before this day. There will be a special period of 3 months available before the opening of the UPC for filing the opt-out applications. This period is termed the “Sunrise Period”. The Sunrise Period is planned to start on 1 March 2023 followed by the entry into force of the UPCA on 1 June 2023. NLO can certainly advise whether you should decide to opt-out or remain open to use the system given certain benefits that it will offer.
Choices to be made for any new and pending patent applications:
Once the new system is in place, you will be faced with a choice concerning your European patent application nearing the grant. You will have to decide between:
- Selecting a Unitary Patent covering all participating EU member states;
- Selecting a “classic” bundle of national patents and then deciding whether to opt them out or not of the competence of the Unified Patent Court
- A combination of the two options is also possible, because the Unitary Patent does not cover all EPC countries, like Spain or UK. Therefore, in addition to a UP, your European patent can be validated in the traditional way in those countries which are not participating in the unitary patent system.
There is no straightforward “one size fits all” strategy: the best option will vary from case to case.
It goes without saying that the advisors at NLO are closely monitoring the developments regarding the new system. Therefore, we recommend you discuss the strategic options with your contact person at NLO.
