There are around 3 months until the unitary patent and Unified Patent Court (UPC) come into being. This will be the biggest change to patent protection in Europe since the European Patent Convention (EPC) came into force in the 1970s, and it will affect all patent applicants and proprietors in Europe, as well as third parties.
As the final countdown approaches, we summarise the latest developments and key issues to consider now.
The launch of the UPC was recently postponed by three months. However, following Germany's recent ratification of the UPC Agreement, the UPC will now start on 1 June 2023. That means the sunrise period (during which “classic” European patents can be opted out of the jurisdiction of the UPC) starts on 1 March.
The EPO is already (as of 1 January ) accepting early requests for unitary effect and requests for a delay in issuing the decision to grant a European patent. These are available for applications for which a communication under Rule 71(3) EPC has been despatched. The EPO said that, as at 17 February, it had received “more than 2,200” requests for unitary effect and/or for delay of grant.
In preparation for the launch, the UPC has held two rounds of training for the judges and staff members of the Court. Further training is planned for March.
A second sunrise practice period for external users to test the sunrise functionalities of the UPC's case management system (CMS) will now run until the end of March 2023. In addition, the UPC has provided further information about creating accounts for the case management system. Keltie's attorneys are taking part in the sunrise practice period in order to be fully prepared when it goes live on 1 March.
Ahead of the launch of the UPC, there are a number of matters that patent applicants and owners need to address.
Top of the list is whether to opt out European patents from the UPC jurisdiction. This option will be possible from 1 March 2022 for the lifetime of the patent or until the opt-out period expires (at least seven years but could be extended to 14). However, there are advantages to acting sooner rather than later: once an action concerning a European patent has been brought in the UPC, it will not be possible to opt out that patent.
Opt-outs can only be filed by the patent proprietor, or by all proprietors where there are more than one; licensees cannot opt-out a patent. It is therefore important to check ownership details of patents in cases where there is any uncertainty.
Finally, applicants with pending EP applications need to review them to consider whether they want to request unitary effect when the patent is granted. It is advisable to plan ahead so that representatives have the correct instructions when the time comes.
For applicants, the unitary patent effectively introduces a third option to consider, in addition to the current European and national routes, when patenting inventions in Europe.
For granted EP patents, the UPC's opt-out mechanism also introduces new considerations when it comes to enforcement and revocation.
Whether you're looking at unitary patents or opting out of the jurisdiction of the new court, there are no right or wrong answers; every company will have a different approach based in its commercial and competitive situation. For example, here are three hypothetical case studies:
- Company A is a growing company with a strong innovation pipeline, but limited budget. Its market extends potentially across all of Europe. It might decide to request unitary effect for pending and future applications, to benefit from cost savings at the point of grant, renewal and – if required – by using the UPC rather than national courts.
- Company B is a multinational with a portfolio of valuable patents, validated in certain key countries. It has numerous large competitors and so the risk of central revocation is real. For this reason, it might prefer to opt all of its European patents out of the UPC, to ensure that any litigation takes place in national courts. It will also validate European patents based on selecting its key markets, rather than requesting unitary effect.
- Company C has a range of businesses. Some of its patents are widely licensed and considered highly valuable, while others are relevant only in certain sectors or markets. It might choose to take a case-by-case approach, opting out those European patents that are most vulnerable while leaving others in the UPC – this may also give it an opportunity to help shape the early jurisprudence in the new system.
While there is much we can predict about the unitary patent and UPC, the fact remains that until it starts operating there are many uncertainties. As unitary patents will be granted by the EPO, we will be dealing with a familiar system. But the Court is a completely new organisation and it may be many months or years before issues are resolved.
For example, one of the key questions at the start is how robust the IT system will be. The first big test will be the opt-outs that are filed during the sunrise period: we don't know how many opt-out requests will be filed but it could be many thousands. How will the IT system cope, particularly at the beginning and end of the sunrise period when demand is likely to be highest?
Another question is simply how popular the new system will be – both in terms of unitary patent requests and disputes brought before the UPC. There is very little indication, apart from anecdotal evidence. The Court needs a critical mass of cases to pay its way. This has led to speculation that it will be pro-patentee – but much may depend on the early cases.
There are also uncertainties around how the court will operate in practice. How important a role will the technical judges have? Will there be forum shopping between the different divisions? Will many decisions be overturned on appeal? And what will be the impact on EPO opposition and appeal proceedings?
Finally, there are likely to be some fundamental challenges that are only answered after the Court has been operating for a while. Will its very existence be challenged by a litigant? How far will its jurisdiction extend – will there be attempts to drag in patents even after they have been opted out?
Watch this space!
Keltie has assembled a team of attorneys to monitor developments leading up to and after the launch of the new system, and we will provide updates and analysis. It certainly provides some exciting new opportunities for patentees, but these need careful consideration as everyone's circumstances will be different. Do contact us with any questions or for guidance on how it will affect your 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.