The Provisional Application Period of the UPC came into effect on 19 January 2022, which means that it is now almost certain that the Unitary Patent (UP) and Unified Patent Court (UPC) will come into effect, possibly within the next 12 months. We have tried to answer some common questions about the new system below. If you have any further questions, please contact us and we will try to answer them!
Q. We have been hearing for many years that the UP/UPC system will come into force “soon”. Is this time any different – is it now certain that the UP/UPC will come into force?
A. The fact that the Provisional Application Period has entered into effect means that most commentators consider that the UP/UPC will definitely come into force. While some further court challenge or political disagreement cannot entirely be ruled out, no such challenge is currently envisaged.
Q. What is the Provisional Application Period?
A. The Provisional Application Period is the period during which all of the practical steps for setting up the new system will be taken, including the final recruitment and training of judges, finalisation and adoption of the rules of procedures, set up of IT systems and so on.
Q. What is the time scale for the UPC to come into effect?
A. The Preparatory Committee considers that the Provisional Application Period will complete its tasks within 8 months, even though it acknowledges that this is ambitious. Once it is certain that the Court system is ready to become operational, Germany will complete the ratification procedure by depositing its instrument of ratification. The UPC will then come into effect on the first day of the fourth month following that act.
If Germany deposits its instrument of ratification close to the end of the 8 month period, the system would be ready to start on 1 January 2023. The system could start earlier, even by 1 October 2022, if it becomes clear sufficiently early (after 5 months) that the Court system will definitely be ready to operate by the end of the 8 months envisaged for the Provisional Application period.
Q. Does the Unitary Patent replace the existing system for obtaining European patents?
A. NO! The Unitary Patent provides an additional option for patentees. It will still be possible to obtain classical European patents instead of a Unitary Patent, and indeed this will be essential to obtain protection in those countries that are not part of the Unitary Patent but which are members of the European Patent Organisation.
Q. What is a Unitary Patent?
A. A Unitary Patent, formally known as a “European patent with unitary effect”, is a single patent for all EU states that are participating in the Unitary Patent system and that have ratified the Unified Patent Court Agreement. It is obtained through exactly the same prosecution procedure as a classical/traditional European patent, but after grant results in a single patent for the participating member states, as opposed to the bundle of national patents that result from validation of a classical European patent.
Q. What are the benefits of a Unitary Patent?
A. A Unitary Patent permits a patentee to obtain a single patent in multiple countries for a lower cost than would be possible by national validation, due to eliminating the costs of validation and the costs of individually renewing in each country. Furthermore, the patentee will be able to enforce the patent for all participating territories in a single action.
Q. Which countries are covered by a Unitary Patent?
A. 16 EU countries have currently ratified the UPCA and deposited their instruments of ratification. These are Austria, Belgium, Bulgaria, Denmark, Estonia, France, Finland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden. Once Germany completes its ratification procedure, the UPC will cover 17 countries.
Other countries which have signed the UPCA but not yet ratified are Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
Spain, Croatia and Poland are EU members but are not participating in the Unitary Patent at present.
Following Brexit, the United Kingdom is not a member of the EU, so is not participating in the Unitary Patent, along with Norway, Switzerland, Turkey and the other EPC, non-EU, member states.
Q. Will the Unitary Patent save on costs?
A. The fees for renewal of a unitary patent have been set at the combined total of the renewal fees of the four countries where European patents were most commonly validated in 2015. Patentees who previously validated in more than 4/5 countries will tend to save on renewal costs, while patentees who validated in fewer countries will find the unitary patent more expensive, but will of course have protection in more territories.
Q. What is the procedure for obtaining a Unitary Patent?
A. A Unitary Patent is obtained by filing a request with the EPO at the latest within one month of the date of grant. During a 7 year transitional period it will be necessary to file a translation of the entire application into another EU language, including if the application is in English.
Q. How will I get protection in countries which are not participating in the Unitary Patent?
A. Protection in other countries is unchanged. For example, if you wish to cover France, Germany, Italy, Spain and UK, you can request a Unitary Patent to cover France, Germany and Italy (and 14 other countries), and you can separately validate in Spain and UK to obtain national patents (EP(ES) and EP(UK)) in those countries. You can of course validate to obtain separate French, German and Italian patents as an alternative to the Unitary Patent.
Q. Will UK (and other non-participating country) European Patent Attorneys be able to apply for Unitary Patents?
A. YES! The prosecution procedure for EPO patents remains unchanged and requesting a Unitary Patent is simply another option (alongside validation) that your UK EPA will provide.
Q. What is the role of the Unified Patent Court?
A. The Unified Patent Court is a new court system that will have jurisdiction over Unitary Patents, as well as over classical European patents, unless those classical European patents are “opted-out”.
Q. What does it mean to opt-out a patent?
A. For a transitional period of 7 years, it will be possible to register an opt-out for a classical European patent with the UPC Registry, which will mean that any action relating to that patent will have to be taken in the national courts, and not at the UPC. In other words, the patent is removed from the jurisdiction of the Unified Patent Court.
Q. Is it possible to opt-out individual patents eg. only the German part of the European part, while leaving other parts subject to the jurisdiction of the UPC?
A. No. An-opt out will be effective for the territories of all participating member states.
Q. Is it possible to opt-out a Unitary Patent from the jurisdiction of the Unified Patent Court?
A. No. Unitary Patents can only be litigated in the Unified Patent Court.
Q. Why would you want to opt-out a patent?
A. This is a complex question. The Unified Patent Court is a new court and there may be many reasons for not wishing to subject your patents to its jurisdiction. However, one of the main reasons for opting out is that you do not wish your European patents to be subject to central revocation. In certain industries, for example the pharmaceutical industry, there has been some concern that the UPC could provide a forum for challenging and potentially revoking patents concerning “blockbuster”drugs across a large part of the EU in a single action. It has therefore been suggested that the pharmaceutical industry will opt-out all of its key patents.
Q. What will happen to the UPC is everyone opts-out all of their patents?
A. This is unlikely. Commentators have suggested that while the pharmaceuticals industry may opt-out its key patents, this will still leave a very substantial number of secondary patents, and the industry has expressed a desire to engage with the system with a view to shaping it. Furthermore, commentators suggest that other industries, such as the electronics and consumer goods industries, are far less concerned about opting-out their patents.
Q. When will I be able to opt-out my patent(s)?
A. There will be a “Sunrise Period” of 3 months before the start of the UPC to allow applicants to register opt-outs. If the UPC were to start on 1 October 2022, the opt-out period would start on 1 July 2022! The ability to opt-out patents will continue until the end of the 7 year transitional period.
Q. Will the UPC have jurisdiction over national (non-EP) patents in participating member states?
A. No. The UPC will have no jurisdiction over patents granted by national patent offices – only patents granted by the EPO.
Q. Will national courts in participating member states continue to have jurisdiction over classical patents granted by the EPO?
A. During a 7-year transitional period, the UPC and the national courts will have joint jurisdiction, unless the classical patents have been opted out. After the 7-year transitional period, both classical and unitary patents will be under the exclusive jurisdiction of the UPC.
Q. How will the Unitary Patent affect European Patent applications which are currently being prosecuted?
A. There are many ways of delaying grant of European patent applications if you wish them to be eligible for the Unitary Patent. The EPO has proposed transitional measures, which will be available after Germany deposits its instrument of ratification of the UPC agreement, to permit an early request for a Unitary Patent, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance).
Q. How will the Unified Patent Court be organised?
A. The Unified Patent Court will comprise a Court of First Instance, a Court of Appeal, and a registry. The Court of First Instance will consist of several regional and local divisions, and a central division, with its seat in Paris and a section in Munich. The section which was formerly allocated to London will need to be reallocated. The Court of Appeal will be located in Luxembourg.
Q. Does the Court of Justice of the European Union (CJEU) have a role in the UPC system?
A. The CJEU is the ultimate arbiter of EU law, so is available to rule on questions of EU law referred to it by the UPC courts.
Q. What are the timescales?
A. See below:
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