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UP & UPC: are you ready for the Unified Patent Court and unitary patent?

Following countless number of false starts over the last few years, the Unified Patent Court (UPC) and unitary patent (UP) may have dropped to the bottom of many patent owners’ “to do” lists. September and October 2021 have seen, however, a flurry of activity and as a result, both the UPC and UP may actually become a reality between mid-2022 and early 2023.

  • On 27 September 2021, Germany ratified the Protocol on the Provisional Application (PPA) of the UPC Agreement. This followed the German President’s signature of the UPC Agreement and Protocol on 07 August 2021, and means that Germany is in a position to ratify the UPC Agreement.
  • On 15 October 2021 the Government of Slovenia ratified the Protocol on the Provisional Application (PPA) of the UPC Agreement and the UPC Agreement.
  • Austria also submitted a draft law in July 2021 to its national parliament for the ratification of the PPA.

UPC provisional application period

Once the ratifications of the PPA by Slovenia and one other participating Member State are completed, the provisional application period of the UPC should start. This will allow for completion of preparatory work establishing the UPC, including stress testing of the electronic case management system and the appointment of judges. The provisional application period is expected to last from six to ten months, most likely eight months, and could commence as early as Q4 2021.

With the provisional application period in effect, Germany can deposit its ratification of the UPC Agreement. Once German ratification is deposited, the new court and pan-European patent system will commence on the first day of the fourth month after the month in which that deposit occurs. Germany will not trigger this timetable until all preparatory work is complete.

The UPC Preparatory Committee have indicated that: “When it is clear that the UPC will be operational upon the entry into force of the UPCA the final ratification of the Agreement by Germany can take place serving as a “gatekeeper” for Member States to ensure a proper process”.

Consequently, the UPC and UP could start between mid-2022 and early 2023.

Sunrise period

Ratification by Germany will also determine the beginning of the “sunrise period” – a three-month window before the UPC becomes fully operational when patent owners are able to file “opt-outs” for existing European patents validated in one or more countries taking part in the UPC. The list of countries is available here: http://dycip.com/upc-countries.

Opting-out in the sunrise period is important for patent owners wanting to avoid the jurisdiction of the UPC. If an opt-out is not filed in the sunrise period and an action started in the UPC when it becomes fully operational, it is not possible to then “opt-out”

These steps are summarised in the table below.

Action/event Comments Earliest expected dates (approximate)
Two further member states ratify the Protocol on the Provisional Application Period (for example, Slovenia and one other). End of which the PAP Protocol enters into force. Q4 2021
PAP preparations to include (1) Governing bodies of the UPC assemble adopt secondary legislation (2) UPC budget finalised (3) IT systems finalised (4) Recruitment of judges of the court finalised. Expected six-ten month period Q4 2021 to A2/Q3 2022
Germany deposits last instrument of ratification of the UPC Agreement (UPCA). When work has progressed enough, Germany will deposit the last instrument of ratification of the UPCA. This is a four-month alert to the start of UPC and UP. Q2/Q3 2022
Opt-outs can be filed in “sunrise period” Three-month window before the start of the UPC. Patent owners are able to file opt-outs for existing EP patents. Q2 2022
UPCA enters into force, UPs are available along with the UPC. Q2/Q3 2022

This timetable is provisional at this stage and there are still some details to be clarified. One is the location of a UPC central division following the UK’s withdrawal from the UPC. Nevertheless, we would suggest re-visiting the UP and UPC with particular focus on whether to “opt out” existing EP Patents from the UPC. Transactional matters such as agreements and licences should also be reviewed. If you need any assistance or advice, please do contact your usual D Young & Co representative or email us at mail@dyoung.com.

Key points to note about the UPC, UP and opt-out

  • A UP must be litigated in the UPC.
  • All European patents must be litigated in the UPC for member states of the UPC, unless the patent owner opts out of the UPC.
  • A validly filed opt-out is effective for the life of the patent.
  • The opt out will be available from the beginning of the sunrise period until the end of the transition period (at least seven years from the start of the UPC).
  • If proceedings are commenced in the UPC before an opt out is filed, the patent owner is restricted to the jurisdiction of the UPC.
  • The UK’s withdrawal from the UPC means that a European patent designating the UK can only be enforced in the UK courts. A similar situation will arise for other Member States of the EPC which are not members of the UP/UPC, for example Spain, Poland, Switzerland and Norway.
  • The UP and UPC do not impact the EPO Opposition and Appeal procedure.

A UP is obtained by filing a European patent application and selecting the UP at grant. Both our UK and Germany based European Patent Attorneys will be able to obtain UPs at the European Patent Office, exactly as we currently do for European patents. We will also be able to prepare and file opt-outs.

Furthermore, D Young & Co’s experienced European patent attorneys, UK and German qualified patent attorneys as well as solicitors and Rechtsanwälte have the rights of representation before the UKIPO, the DPMA, the EPO and the UPC and can advise and support you when enforcing or defending actions for patent infringement and revocation/nullity actions. We will therefore be able to advise on a strategy for choosing the most appropriate route for patent protection utilising both the options of the unitary patent and national patent rights to match budget with respect to our client’s business strategy.

We will keep a close eye on developments and we will be providing further advice and guidance over the next few months. We have an area on our website (www.dyoung.com/upandupc) dedicated to the UP and the UPC.

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