We have produced detailed guides to both the UP and UPC that are available on a dedicated UP & UPC section of our website: www.dyoung.com/upandupc. If you have any queries regarding these, please do contact your usual D Young & Co representative or email us at mail@dyoung.com.

Clients will be contacted with specific guidance in the coming months and we will continue to publish regular and timely updates on our website UP & UPC pages. The following discussion provides an update on the expected timeline for the commencement of the UPC.

Latest progress of the ratification of the Protocol on the Provisional application of the UPC Agreement

Following recent developments by Austria, the UPC and UP are likely to become a reality between the middle and end of 2022, or in early 2023.

On 19 November 2021, the Austrian Parliament approved the Protocol on the Provisional application of the UPC Agreement (PAP-Protocol). This was then followed on 2 December 2021 by unanimous approval of ratification of the PAP-Protocol by the Austrian Federal Council (the second chamber of the Austrian Parliament). Austria are now therefore in a position to ratify the PAP-Protocol and bring the provisional application period for the UPC into effect.

As explained in previous articles, the PAP-Protocol is a short preparatory agreement of secondary legislation governing preparations for the start of the UPC by provisional application of some the Articles of the UPC Agreement required for those preparations. 13 member states need to have ratified the PAP-Protocol in order for it to come into effect and Austria is looking like the final, thirteen state. Assuming Austria deposits its ratification in late 2021 or early 2022, the provisional application period will commence. More information is set out below.

When will the UPC provisional application period begin?

Once Austria has completed its ratifications of the PAP-Protocol, 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, as noted above, is likely to commence in late 2021 or early 2022.

When will the UPC system come into force?

With the provisional application period in effect, Germany can deposit its ratification of the UPC Agreement. Once German ratification is deposited, the new court 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 system could come into force 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 validly registered 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 with an indication of the earliest dates we expect events to take place.

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 transitional 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 signatories of the UPC Agreement, for example Spain, Poland, Switzerland and Norway.
• The UP and UPC do not impact the EPO opposition and appeal procedure.

Representation

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.