Following delays from Brexit and a constitutional challenge in Germany, the deposit of Austria's instrument of ratification on the Protocol on Provisional Application to the Agreement on a Unified Patent Court (UPC) in mid January 2022 has started the provisional application period which allows final preparations for the UPC to be made.
During the provisional application phase judges will be appointed and technical preparations (e.g. to the online case management system) will be finalised. At some point during this period (which is expected to last at least 8 months) Germany will deposit its instrument of ratification* for the UPC Agreement (UPCA) which will start a 4 month clock running before the court is formally brought into existence.
The EPO also announced a couple of transitional measures relating to the Unitary Patent which will be made available before the entry into force of the unitary patent system, namely:
- An option to file early requests for unitary effect
- An option to request a delay the issuing of a decision to grant a European patent
Both measures will be available once Germany deposits its instrument of ratification for the UPCA for cases where a communication under Rule 71(3) EPC has issued.
Currently, under the European Patent Convention (EPC) a patent applicant can file a European patent application with the European Patent Office (EPO). This single European application is prosecuted, and hopefully granted, by the EPO, and retains the applicant's right to protection in any of the EPC-contracting countries (there are 38 EPC contracting states countries). Once granted, the European patent is validated in the patent owner's choice of EPC-contracting countries, where it essentially becomes a bundle of national patents. A patent owner might typically choose between 3 and 10 countries for validation. Each national patent stands and falls independently of the others, and each must be litigated separately in the relevant national court.
In December 2012, the European Parliament approved the formation of 'A European Patent with Unitary Effect' (often referred to as a unitary patent or an EU patent), and a Unified European Patent Court to oversee its enforcement. Once the unitary patent system goes live, an applicant will be able to file a European patent application in the same way as before, and up to grant the process will remain the same. However, after grant, the patent owner will be able to choose between two options: either validation of the patent in separate countries in the same way as before, or the new unitary patent (possibly with some validations in countries not covered by the unitary patent if required).
The unitary patent will have effect in at least 17 of the EU states that are participating in the system (out of the 27 EU member states, twenty-four have agreed to participate in the unitary patent system so the number of countries available in the system when it goes lives could be higher than the current 17 states). After grant, a single renewal fee will be payable to cover all participating countries, and the unitary patent will be revoked, maintained, assigned or amended centrally, with effect in all participating countries.
The unified patent court (UPC) will be set up to enforce both unitary patents and European patents validated in those EPC countries that have signed and ratified the UPC Agreement. The default position will be that the UPC will have exclusive competence over any existing granted European patents.
However, if you have a European patent that has already granted, you will be able to choose to opt the patent out of this exclusive competence if you wish, so that litigation can take place in the national courts, rather than at the UPC. This opt out will be on a patent-by-patent basis, and you will be able to opt the patent out at any time up to one month before the end of the transitional period (initially set at 7 years, but potentially extendible by a further 7).
*Since Germany's parliament has already approved its instrument of ratification the start of the unitary patent system looks to be a formality now.
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