Waiting for the Sun – UPC delayed 2 months

Roadmap delayed by two months

Previously, the UPC announced its intention to, subject to the long-awaited German deposit, open its doors on 1 April 2023, which would mean that the Sunrise Period would start together with the new year of 2023. Visible progress was made, for instance through the appointment of judges. However, the start of the Sunrise Period is now postponed for two months. The additional time is useful to allow future users to further prepare themselves.

Strong authentication requires strong preparation

To access the UPC’s dedicated Case Management System (CMS) and to sign documents, users will need strong authentication. For this, there is a need for two factors in the form of both a client authentication (physical object) and a qualified electronic signature (eIDAS-compliant digital certificate). The requirements of the UPC are so strict that the list of commercial vendors is rather limited, and accordingly there are reports of parties not being able to equip themselves. The delay accommodates these parties.

The UPC does report that all other preparatory work is on track, so no further delay is expected beyond 1 June 2023. They mention that the functionalities of the CMS have been positively tested. From our end, NLO has also successfully tested and verified its access to the CMS

Quick Summary of the Unitary Patent system

Current system: presently, under the European Patent Convention (EPC), a granted European Patent must be validated in individual member states. Practically speaking, this involves costs for every chosen jurisdiction - and these costs scale with the number of member states selected. Because each resulting patent is a national patent, its fate is independent. This means that for each jurisdiction, the local patent can remain in force or be invalidated.

Unitary Patent (UP) and Unified Patent Court (UPC) system: with a Unitary Patent (UP), all participating states are instead covered by a single patent (national validations can then still be used to separately cover any non-participating states). The centralised procedure can represent a cost saving when broad coverage is sought. This also means that the fate of the patent will now be the same in all participating states: it is in fact a single, unitary patent. To deal with such new patent spanning several independent territories, a new international court was created, known as the Unified Patent Court (UPC). Eventually, this new court will have exclusive competence not only over UPs, but also over all European Patents (EPs) granted by EPO. As an advantage, an injunction won at the UPC can be enforced across all participating states, obviating the need to seek an injunction in every individual jurisdiction. This mirror has two faces, because a successful revocation action could similarly lead to a loss of patent protection in multiple countries.

How to prepare

It is important to determine a strategy for your IP. If you do not make a choice, your existing patents may potentially be locked within the competence of the new and untested Unified Patent Court. While this may be your intention, it may also not be to your advantage – and when a third party initiates an action against one of your patents at the UPC, this means that the choice of jurisdiction has been made for you by your competitor. Similarly, a national action initiated by a third party could tie your case up in a national court.

Such scenarios can be avoided by prior planning. As soon as the Sunrise period starts, it will be possible to register your intention to opt-out of the system for your existing granted EP patents. Additionally, starting on 1 January 2023, it will become possible to file an early request for unitary effect at the EPO, as well as a request for a delay in granting your European Patent. These measures can help to ensure a smooth entry of an IP portfolio into the UP(C) system.

As always, the decision on whether to participate in the new system, and the extent to which you do so, depends on several considerations. Your advisors at NLO are closely monitoring the Unitary Patent developments. To get the best advice for your situation, we recommend that you discuss your strategic options with your contact person at NLO.