A spectre is haunting Europe – the spectre of... the
Unitary Patent. With Germany having deposited its ratification
document on 17 February 2023, this spectre is finally coming to
life: the European Patent with Unitary Effect
("Unitary Patent") and the Unified
Patent Court ("UPC") system will enter
their preparatory phase. The actual launch date (the date as of
which Unitary Patents will be in effect and actions can be filed
with the UPC) is set for 1 June 2023.
Under the new system it will be possible to obtain unitary effect
for European Patents throughout numerous EU Member States and to
enforce them across national borders in a single procedure. These
Unitary Patents are somehow comparable to EU Trademarks and
Community Designs, which also have unitary effect and already have
been established for decades. But the new Unitary Patent is also a
further development of the European Patent system, i.e. the
established system through which patent protection can already be
obtained in many states in the EU and beyond.
Differences to the "classic" European Patent
The established European Patent is essentially an application
tool, allowing central examination and opposition procedures at the
European Patent Office. As of grant, however, it establishes
independent national patent rights in each of the states designated
by the applicant. These national patents must then be enforced
before the national courts and challenged before the national
courts or patent offices. In contrast, the new Unitary Patent
creates a unitary effect in all participating Member States. With a
single application, patent protection can thus be obtained
efficiently in initially 17 (and later up to 25) EU Member States.
This is not only interesting for established technology players
with large patent portfolios, but also for start-ups. The granting
procedure is based on the European Patent Convention and therefore
follows the usual pattern known from the European Patent system. In
the new system, once a European Patent has been granted, the
applicant can file a request for unitary effect in all
participating EU Member States; additional protection in other
member states of the European Patent Convention is still possible.
This patent can then be enforced in all participating Member States
in one single procedure, but it can also be challenged via a
centralised cancellation procedure.
Not all EU Member States are in (yet)
Spain did not want to participate in this system (which was
initially designed as an EU instrument) – and even opposed
it. In addition, Croatia was not yet an EU member at the time the
agreement was concluded; a decision on possible accession is still
pending there. Since the system is only open to EU Member States,
the number of participating states was further reduced to 25 due to
Brexit. Ultimately, the remaining Member States pushed the project
forward and agreed on the UPC Agreement. This is a treaty under
international law that must be signed and ratified by all
participating states before it can take effect in the respective
state. So far, 17 out of the 25 participating EU Member States have
ratified it, including Austria.
Patent enforcement under the new system
The concept of a unified jurisdiction through the newly
created UPC is remarkable. Under the already established system of
EU trademark law, national courts in the EU Member States act as EU
trademark courts. Thus, in Austria, an action for infringement of
an EU Trademark (with unitary effect) must be filed with national
courts acting as EU Trademark Courts but applying national
procedural law. Contrary to this, actions arising from or against
unitary patents are to be brought before the UPC, which is a
separate court established by an international agreement that
applies uniform procedural law and its own rules of procedure, and
whose judges are subject to a separate appointment process. The
decisions of this court are then enforceable like decisions of
national courts in all EU Member States and beyond.
UPC locations
The UPC is structured as one single court. However, it is
divided into different chambers established at different locations.
There will be a central chamber in Paris with a branch office in
Munich (discussions about establishing a second branch, perhaps in
Milan, are still ongoing after the second branch planned in London
fell victim to Brexit). The central chamber is primarily
responsible for nullity actions against granted patents.
Infringement proceedings, on the other hand, would generally have
to be brought before regional or local chambers distributed
throughout the participating states, one of which will be set up in
Vienna and another one in Ljubljana, for example. The Court of
Appeals, which is responsible for appeals from all chambers, has
its seat in Luxembourg.
Affected patents
In any case, the UPC will be competent to hear cases based on
or against the new Unitary Patents. In addition, it will also have
jurisdiction by default for actions arising from and against
European Patents without unitary effect which are protected in the
participating Member States ("classic" European Patents).
However, the owners of these patents can opt out of the UPC's
jurisdiction for an initial period of seven years, for example for
tactical reasons, in order to avoid the patent portfolio being
centrally contestable or to wait and see how the new court system
unfolds. Applications can be filed during the three-month
"sunrise phase" to begin on 1 March 2023. A later
"opting in" is possible in principle, but only if no
proceedings relating to the specific patents are pending. Patent
owners should therefore consider whether a quick "opting
out" could indeed bring strategic advantages.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
