The Unified Patent Court (UPC) recently published a roadmap towards a 1 April 2023 start date for the UPC and Unitary Patent (UP) system, with the Sunrise period (during which patent holders can file opt their European patents out of the jurisdiction of the UPC before the UP system comes into effect) planned to start on 1 January 2023. It is therefore a good time to recap our advice to patent proprietors on steps to consider to ensure preparedness for the new system.
1. Organise your opt outs
We recommend that holders of European patents and patent applications review their portfolios to identify which, if any, of their patents and applications they would like to opt out of the jurisdiction of the Unified Patent Court.
Once the cases to be opted out have been identified, we recommend that an ownership review is undertaken, to ensure that the true proprietor can be named in the request to opt out.
In many cases, ownership of a patent or application will be straightforward, for example where a patent was granted to the original applicant. However, in cases where there has been a transaction involving a European patent or patent application such as an acquisition or merger, or where patents are owned by a holding company, determining the true legal owner may be more involved.
It is of vital importance that the true legal owner of a European patent or application is identified and named in any opt out request. The UPC will not check on filing that the proprietor information in an opt out request is correct. If a request to opt out names the wrong proprietor, the request will be invalid (even though the opt out will appear to have been registered) and so the patent will remain vulnerable to central revocation by the UPC. This may only come to light if the patent is challenged in a UPC central revocation action, at which point it will be too late to correct the opt out request.
Once the patents/applications to be opted out have been identified, an opt out service provider can be engaged to perform the opt outs.
For information on our opt out service please contact us.
2. Prepare for Unitary Patent Validations
As a counterpoint to step 1 (above), we recommend that applicants review their pending European patent applications to decide which, if any, they wish to validate as Unitary Patents once the UP is available.
For applications for which a Unitary Patent is desired that are approaching grant, it may be necessary to take action to delay grant until the unitary patent is available as a validation option.
The European Patent Office has indicated that, once Germany has deposited its instrument of ratification of the UPC Agreement (which is currently expected to occur in December 2022), the option will be available to request a delay in the grant of a European patent until the Unitary Patent is available as a validation option. Conditions for requesting delays include that a notice of allowance (communication under Rule 71(3) EPC) has issued and the applicant has not already approved the text intended for grant.
Where the deadline for approving the text intended for grant falls before the expected date of German ratification, it may be necessary to explore other options for delaying grant; please get in touch with your usual HLK contact if this is of interest to you.
3. Make sure your agreements are fit for purpose in the UP/UPC era
Many IP agreements will have been drafted without consideration of the UPC and UP system, and so may be silent or ambiguous as to how considerations such as the choice of validation strategy (UP vs classical national validations), opting out of the jurisdiction of the UPC, and choice of forum for litigation (national courts vs UPC).
We recommend that patent holders review any agreements that involve intellectual property (e.g. joint development agreements, licences etc) to ensure that they are fit for purpose in the UP/UPC era. If necessary, these agreements should be re-drafted to ensure clarity on the rights and responsibilities of each party in relation to issues such as patent validation strategy, opt-outs and litigation strategy and the like. This is particularly the case where exclusive licensees may have some control of the prosecution of patents/applications.
4. Prepare for UPC litigation
Litigation at the UPC will be highly-pressured and conducted under tight time limits. The procedure is heavily biased towards detailed written pleadings, with the aim of being able to hold a final oral hearing on infringement and validity within one year of the filing of a claim at the UPC. By way of example; the deadline for filing a preliminary objection, that is, to challenge the jurisdiction of the UPC in a central revocation action, is one month from service of the claim.
Unlike in many national court systems, service of pleadings in the UPC will be performed by the UPC Registry, which could serve the pleadings on the representative of record at the EPO or at a national patent office if there is no representative of record at the UPC.
Clearly this could lead to delays in the patentee receiving the claim, particularly if the claim is served on a representative that is not expecting service from the UPC and may not be capable of promptly responding to service.
We therefore suggest that holders of European patents consider appointing representatives at the UPC for any European patents that have not been opted out, to minimise any delay in learning of a claim against any such patents, and therefore maximise the time available to respond to the claim within the UPC's strict time limits.
The UPC opens up many new strategic options for patent litigation in Europe. While litigation strategy must necessarily be tailored to the circumstances of each particular case, we recommend that potential litigants familiarise themselves with the UPC, its benefits and disadvantages, with an eye to future litigation strategy.
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.