Germany: The UPC Is Coming!

After decades of discussion, the implementation of a so-called "Unitary Patent Package", i.e. the establishment of a Unitary Patent (UP) and a Unified Patent Court (UPC), has reached its final stages. The Unitary Patent (UP) aims to provide a single approach to patent protection and enforcement across 24 European Union Member States with a combined population of more than 350 million.

Using the existing European patent application procedure, a Unitary Patent will be administered centrally by the European Patent Office (EPO). Once obtained, a Unitary Patent will be enforceable throughout the participating Member States in a single action brought before the new Unified Patent Court (UPC). The Unitary Patent Package is currently expected to enter into force during 2022 and will be a supplement to the existing European Patent.

However, the implementation of the agreement is dependent on ratification in at least 13 signatory states of which the three most patent intensive member states must be among. Originally these three countries was Germany, France and the United Kingdom.

As of 31 January 2020, the UK left the EU and as of 20 July they also announced the withdrawal of the ratification of the Agreement of the Unified Patent Court (UPCA), which in effect means that the UK is no longer a part of the Unitary Patent Package. With Brexit being a reality, Italy is now the third obligatory country.

Furthermore the ratification in Germany has been upheld twice. In 2017 two complaints were filed with the German Federal Constitutional Court (FCC), which led to an annulment of the first ratification, which was made without the required two-third majority in the German Bundestag. During the end of 2020, the German Bundestag and Bundesrat approved the ratification once again, but on 18 December two new complaints were filed with the FCC and in January 2021 the FCC has asked the Bundespräsident Frank-Walter Steinmeier to wait signing the agreement and hence finalising the ratification process in Germany. On 9 July the FCC rejected the two complaints and on 7 August Frank-Walter Steinmeier signed the legislation which was published in the Federal Law Gazette on 12 August finalizing the German ratification.

The next step is for the Protocol on Provisional Application (PPA) to be deposited with the Council of the European Union, and for two other UPC Member States to sign it. It is likely that this will happen during the Autumn of this year. The PPA provides for a provisional application period in which various preparations will be made so that the UPC can become fully operational, including the employment of judges and finalising the UPC Rules of Procedure.

A second piece of legislation, the UPCA, will be deposited by Germany at a later date, once the UPC is almost ready to start operating. This will trigger the 'UPC countdown', with the UPC opening its doors approximately 4 months later.

Initially, Unitary Patents may not cover all participating Member States as some of them may not yet have ratified the UPC Agreement when it enters into force. Outstanding ratifications are likely to take place successively, so there may be different generations of Unitary Patents with different territorial coverage. The coverage of a given generation of Unitary Patents will stay the same for their entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect. In other words, there will be no extension of the territorial coverage of Unitary Patents to other Member States which ratify the UPC Agreement after the registration of unitary effect by the EPO.

If you wish to learn more about the background and history of the UPC, go to unified-patent-court.org or www.epo.org.

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