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Be prepared for the Unitary Patent (UP) and the Unified Patent Court (UPC) Sunrise

 

At present, court cases about infringement of European patents are handled by the national courts of the country concerned. Also, opposition proceedings can only be initiated centrally at the European Patent Office shortly, i.e. within 9 months, after grant.

The introduction of the Unitary Patent (UP) system and the Unified Patent Court (UPC) will centralise the judicial process for all participating countries* at one European court. This goes for all new and existing European patents.

With the recent ratification by Austria, it looks like the UP and the UPC will become a reality. Once Germany has also deposited its instrument of ratification, the UPC Agreement (UPCA) will enter in force on the first day of the fourth month after this deposition. It is generally expected that the UPCA will enter into force in the second half of 2022.

Alternative

The UP is an alternative to the existing validation process of a European patent in individual countries. It is thus not a “new” patent, but an opportunity to make a granted European patent effective in all participating EU countries* at once, instead of the previously necessary validation of the patent for each individual country. The process of applying for and granting European patents will remain as it is.

As the UP automatically falls under the UPC, the judicial process will be centralised: the UPC will be competent in deciding on patent infringement for UPs. Further, it will be possible to start nullity proceedings at the UPC. Thus, it will be possible to seek revocation of a UP for the whole territory covered by the patent, also after the period for starting opposition proceedings at the European Patent Office has lapsed.

Pending European applications

As soon as the new patent system takes effect, you can opt for registration as a UP instead of registration in individual countries when validating a European patent. In this way, the patent will be immediately valid in all participating countries*. Please note that the UP will not apply to EPC contracting states that are not EU member states, nor to EU member states that are not participating. For those, a separate validation of the European patent will remain needed in order to take effect in those states.

One may wish to delay grant of pending applications and register as a UP in order to be able to benefit from the simplified validation process.

Two transitional measures

With a view to supporting users in an early uptake of the UP, the European Patent Office has decided to introduce two transitional measures for European patent applications for which an intention to grant has already been issued. These measures will be made available ahead of the entry into force of the UP system, but only from the date of ratification of the UPCA by Germany.

The first transitional measure will allow applicants to file requests to make the patent part of the UP system already before the start thereof.

Through the second transitional measure, an applicant may request a postponement of the publication of the patent grant. The postponement can be requested after the intention to grant has been announced, but not after the applicant has approved the text intended for granting.

The postponement of the publication of the patent grant can ensure that the European patent can still qualify for UP protection.

Granted European patents not registered as UP

The UPC will also be available for European Patents that have not been registered as UP. However, these cannot retroactively be registered as UP. Thus it will not be possible to extend the territory initially covered or to change for the payment of the national annuity fees into a single UP annuity fee.

Opting out

For European patents that have not been registered as UP (before or after entry into force of the UPCA) it is possible to choose not to have the UPC as the competent court. For this the patent has to be opted out. Opting out can be done starting from three months before the UPCA enters into force (the so-called Sunrise period). Once the UPCA has entered into force, the opt-out for a specific patent can still be declared at any time during a transitional period (currently seven years; this may be extended to 14 years), provided no legal actions at the UPC have been started in respect of that patent.

UPs cannot be opted out from the UPC.

Next steps

Financial considerations aside, the choice to have the European patent within the UPCA or to keep the European patent outside the UPCA is a strategic decision. Central litigation can make legal proceedings more efficient, but case law has yet to develop. Keeping the door open to decentralised litigation before national courts may be interesting, for instance, to spread risks.

Any questions?

Please contact one of our experts. For more information about the UPC, see also our dossier ‘A new European Patent System’.

* The 17 countries that will participate in the UP system when it starts, are:

  1. Austria
  2. Belgium
  3. Bulgaria
  4. Denmark
  5. Estonia
  6. Finland
  7. France
  8. Germany
  9. Italy
  10. Latvia
  11. Lithuania
  12. Luxembourg
  13. Malta
  14. The Netherlands
  15. Portugal
  16. Slovenia
  17. Sweden

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Gijs de Iongh

Gijs de Iongh

  • European and Dutch Patent Attorney, European Patent Litigator
  • Associate
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