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Bundesrat passes bill of UPC ratification

Today, 18 December 2020, the Bundesrat – Germany’s upper house of parliament representing the country’s sixteen federated states – voted in favour of the legislation for ratifying the Unified Patent Court (UPC).

Ratification of the UPC Agreement (UPCA) by Germany – subject to Presidential formalities – will mean that the required conditions for the UPC and the unitary patent to come into effect will be met. Germany will become the third of the required “three member states in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place,” to ratify the UPCA, joining France and the UK despite the UK’s withdrawal from both the UPCA and European Union.

The bill of ratification passed the two-thirds majority required in the Bundestag – the lower house of Germany’s parliament – comfortably and was expected to do so too in the Bundesrat, so its approval today does not come as a big surprise. However, this is the second attempt to pass the bill, following the voiding of the previous legislation in 2017 by a constitutional complaint. A challenge to the second attempt by Germany’s legislature’s passing of the bill may reasonably be expected. However, today’s vote brings the UPC and unitary patents (UPs) significantly further along the road towards coming into effect.

Should Germany ratify the UPC Agreement without any issues, the provisional application period will be able to commence in 2021. This period allows the UPC to come into existence before formal commencement of the court itself. The last three months of the provisional application period will be the “sunrise period” during which patent proprietors will be able to opt-out any existing granted European patents from the jurisdiction of the UPC. We could therefore see the new UPC/UP system starting at the beginning of 2022.

In light of the positive vote of the Bundesrat, we would suggest that clients re-visit their opt-out strategy in early 2021 and identify any proprietorship issues for existing European patents. A key requirement of the opt-out process is that the opt-out request is filed by the “true” proprietor. If the opt-out is filed in the wrong name then it may be invalid and any correction will not be back-dated. It is also important to check the ownership situation for any SPCs as these will need to be opted-out independently of the underlying patent and may be in a different name.

The attorneys at D Young & Co will be able to handle the filing of opt-outs on behalf of clients, and can advise on strategy as required. In addition, D Young & Co’s attorneys will be able to represent clients in the UPC. This representation is in addition to our existing representation rights before the EPO, and means that we are able to meet all of our clients’ European patent requirements.

Bundesrat decision 18 December 2020

Bundesrat passes bill of UPC ratification. View decision (German language).

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