Unified Patent Court and Unitary Patent System Commence on 1st June 2023

After decades of negotiations amongst European Patent Convention (EPC) members the ability to be granted a single patent covering many (but not all) EPC contracting states which can be enforced in those states through one set of judicial proceedings will commence on 1st June 2023.

EPC Background
Currently there is no European patent right, rather the EPC is only a procedural mechanism whereby applicants can make a single patent application which can progress through the examination stage up until the decision to grant is notified. At that stage the applicant has to decide which of the EPC contracting states (and validation and extension states) they want to validate the grant in. After the 9-month opposition period before the EPO, this results in a bundle of granted patents, each of which needs to be individually enforced (or attacked) within the national courts of the state it is validated in.

Eligibility for Supplementary System
The Unified Patent Court (UPC) and Unitary Patent (UP) legislation were introduced to supplement the EPC in order to remedy some of the drawbacks of the current EPC system. However, in order to allow for European patent rights the UPC and UP are both legislation of the European Union (EU), whereas the EPC is a piece of international law not subject to the law of the EU. Consequently, only EU member states can join the UPC and UP system. While all 27 EU member states are members of the EPC, there are a further 12 EPC members that are not EU members. So far 17 EU member states have acceded to and ratified both the UPC and the UP legislation. These participating states are: Germany, France, Italy, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. A further 7 EU member states have acceded to both the UPC and UP legislation, but have only ratified the UP. These states will remain ineligible for the supplementary system until they ratify the UPC legislation, which the UP legislation depends upon. These currently non-participating EU states are: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia. The remaining 3 EU states of Croatia, Poland and Spain have not acceded to the UPC and UP system and so are also currently ineligible to participate. The remaining 12 EPC member states are not in the EU, with notable countries in this group being the United Kingdom, Turkey, Switzerland and Norway.

Decision Time for Patentees of EPs Validated in Participating States before 1st June 2023
National patents obtained via the EPC before 1st June 2023 that were validated in one of the 17 participating states will by default be subject to the jurisdiction of the UPC unless the patentee opts out in time. Opt-outs lodged with the EPO before 1st June 2023 will be in time. If an opt-out is lodged with the EPO during the transitional period of 7-years on or after 1st June 2023 it will only be in time if no action has been commenced before the UPC. Where a patentee has opted out before or during that 7 year period they can also opt back in provided no action has been brought before a national court of a UPC Agreement member state. National patents obtained via the EPC before 1st June 2023 that were validated in the other EU and non-EU EPC member states will continue to be subject to the jurisdiction of the national court, apart from those that are still within the 9-month post-grant opposition period before the EPO (and appeals therefrom).

Decision Time for EP Applicants with Applications Pending before 1st June 2023
If an EP applicant that is unlikely to be issued with a decision to grant before 1st June 2023 and the applicant ultimately wants to obtain patent protection in some or all of the participating states, they need to decide whether they want to be subject to the jurisdiction of the UPC for those participating states. If they currently do not, then the safest option is to opt-out before 1st June 2023. If they subsequently change their mind there will be an option to opt back in when the EP is granted. They can also opt back in during the 7 year transitional period provided no action has been brought before a national court of a UPC Agreement member state.

Decision Time for EPC Applicants with Applications Pending from 1st June 2023
From 1st June 2023 there will be two options for EPC patent applicants whose application thenceforth gets issued with a decision to grant as follows:
(i) They can choose to have a UP covering the above noted 17 EU member states. If this option is chosen the UP will be subject to the jurisdiction of the UPC and cannot be opted back out. Validation of grant can continue to be made individually in the other EU and non-EU EPC member states. These will only be subject to central attack during the 9-month post-grant opposition period before the EPO (and appeals therefrom), and thereafter only subject to the jurisdiction of the national court. A member state covered by a UP cannot also be validated before the national office. When currently non participating EU states subsequently ratify the UPC they will only be eligible for inclusion for UP’s that grant from the date they join;
(ii) They can choose to only validate grant individually in selected EPC member states, whether or not those states are participating in the UP system. Nonetheless, the UPC will be the default jurisdiction for such national patents in any of those EPC member states that are in the UPC. However, that default jurisdiction of the UPC can potentially be avoided in two ways for a transitional period of 7-years from 1st June 2023. (a) If the party bringing the infringement or revocation action commences that action before a national court; or (b) If the proprietor or patent applicant opts out provided no action has already been brought before the UPC. Where a patentee or patent applicant has opted out before or during that 7 year period they can also opt back in provided no action has been brought before a national court of a UPC Agreement member state. As with option (i) validations in the other EU and non-EU EPC member states will only be subject to central attack during the 9-month post-grant opposition period and thereafter only subject to the jurisdiction of the national court.

Unitary Patent: What are the Advantages and Disadvantages?

• Given the savings in validation, translation, renewal and recordal costs UPs are likely to be more cost effective if patent protection is sought in 4 or more participating states;
• If a UP is unlikely to be renewed up to its full term, then renewal fee savings will be less significant;
• If a UP is granted before a new member state accedes to the UPC Agreement, the UP will not extend to that new member state;
• Once opted in for a UP cannot be opted back out of;
• UPs have unitary effect in applicable jurisdictions and are only enforceable and revocable as a single patent;
• UPs cannot be partially assigned, but they can be partially licenced;
• It is envisaged that translation from one of the EPC official languages will not be required for non-litigated patents. However, until machine translation significantly improves UPs granted in German or French must be translated into English and all UPs granted in English must be translated into German or French;
• Nullity actions for a UP can be commenced by anyone irrespective of whether they are affected by the UP.

Unified Patent Court: What are the Advantages and Disadvantages?

• Injunction, Infringement and/or revocation proceedings can be determined by a single proceeding for participating states, giving cost and time savings for all involved;
• Proceedings before the UPC will avoid the possibility of diverging decisions regarding the same patent by national courts of different participating states;
• Proceedings before a central division will be in the language the UP was granted in, while local or regional divisions use an official language of the hosting state unless discretion allows the language of grant to be used;
• If an existing bundle of national rights validated from an EP are in the names of different proprietors, then all of those proprietors would have to opt out of the UPC in order for an opt out application to be effective;
• The Unified Patent Court’s jurisdiction in respect of a given unitary patent will only extend to states that were members of the Unified Patent Court Agreement on the effective filing date of that patent

Author: Quinn Miller

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