A Unified Patent Court and a Unitary Patent System is planned to be coming into effect April 1, 2023. This will trigger a sunrise period for opting out, which will start January 1, 2023. There could of course be delays to this, however this gives the patent profession a date in which systems need to be in place to opt-out for individual patents, as efficiently as possible.
The New Unified Patent Court. (“UPC”)
A new Unified Patent Court has been created which will have jurisdiction over all of the EU countries participating in the Unitary Patent system for infringement and validity actions.
Importantly, by default, this new Court will automatically have jurisdiction over existing granted patents in those countries which are participating in the new system. This is where the sunrise period comes into play, as this will give a 3-month opportunity to “opt out” existing patents in advance of commencement of this system. This will involve actively opting out each individual patent.
Any decision of the Unified Patent Court to uphold, revoke, or find infringement applies in all countries participating in the system in their entirety. It is planned that the UPC will have simpler and faster procedures and is likely to be a lot less expensive than using the national courts. This gives rise to the risk that a competitor has a route to attempt to have your patent revoked after the EPO Opposition 9-month window has expired and with effect for multiple countries in a manner which is simpler, faster and less expensive than at present.
Because of the risks involved it may be advisable to actively opt out some or all existing granted patents from the jurisdiction of new Court.
The New Unitary Patent System
The current European Patent system will continue in all current 38 countries.
The new Unitary Patent is a means to cover in a unitary manner a group of participating EU countries, when a European Patent is granted. Upon grant of the European Patent, unitary protection would need to be requested before the EPO. It is similar to validating the patent as a Unitary Patent akin in principle to the existing validation in individual states. It would be done in in parallel with validating it in states not covered, such as IE and GB.
A Unitary Patent can be requested from the EPO within 1 month after publication by the EPO of the grant of a European Patent.
Only countries within the EU can participate in the new Unitary Patent system. Participation is optional. Not all EU countries will participate.
The main advantages for newly granted patents are savings on validation costs, renewal fees, and litigation costs as these will be centralised. The savings are significant if protection is required in several of the participating countries.
However, a Unitary Patent is not cost effective if protection is required in only a small number of participating countries.
The major disadvantage is that any decision to revoke applies in all countries participating in the system in their entirety.
The UPC have released a roadmap based off this timeline: https://www.unified-patent-court.org/sites/default/files/upc_-_exco_-_upc_external_roadmap-v0.9_edit.pdf
These notes are general in nature and specific queries should be addressed to Weldon O’Brien Ltd.
