MAJOR UPDATES: New Unitary Patent System for Europe Starting 1 June 2023
Following the recent ratification of the Agreement on a Unified Patent Court (“The UPC Agreement”) by Germany, the EPO has announced that the long-awaited Unitary Patent System will come into effect on 1 June 2023, marking a new era for European patent protection with the launch of the Unified Patent Court (“UPC”) and the Unitary Patent (“UP”). This also confirms that the ‘sunrise period’ for opting-out of the jurisdiction of the new Unified Patent Court will open on 1 March 2023.
The new system will enable uniform patent protection by way of a single type of patent (the Unitary Patent) that is valid across all participating EU members states, and provide a centralised platform for Europe-wide patent litigation before the Unified Patent Court. Starting from 1 June 2023, unitary protection will be available in 17 member states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Sweden, Slovenia) which have already ratified the UPC Agreement, and it is expected that more member states will join the system once it is up and running. However, some EU Member States (Spain, Poland, and Croatia) are not participating in the UPC, and the Non-EU EPC states (such as the UK, Switzerland, Norway, Turkey) will not be part of the new UPC/UP system.
Please refer to the official website below for details of the UPC member states:
Please find below a brief introduction of the UPC and the Unitary Patent.
The Unified Patent Court (UPC)
What is the Unified Patent Court (UPC)?
A new, Unified Patent Court (UPC) will become fully operational on 1 June 2023, and, by default, will have jurisdiction over all European patents (including “classical” EP granted patents and the coming Unitary Patents to be granted) and any pending/new European patent applications upon grant1. In essence, all past and present European patents (validated in each country) and applications will be affected. In other words, any litigation (including invalidity/revocation and infringement proceedings) associated with the EP Patents will be dealt with by a single, multijurisdictional court, unless these EP Patents have been opted out of their jurisdiction.
OPT-OUT of the UPC for your existing EP Patents and/or applications
For Applicants/Patentees who do not want the UPC to have jurisdiction over their existing EP Patents and/or applications2, it will be necessary to file an opt-out request. An opt-out request for a EP Patent cannot be done if an action has been brought at the UPC for said EP Patent. Therefore, if opting out is of interest to you, it’s strongly recommended to opt out as soon as possible to minimize risk. However, please note that it is not possible to opt-out a Unitary Patent (once granted) from the UPC’s competence.
The effect of opting out
Once opted out, invalidity and infringement proceedings relating to the EP Patent can only be brought in the national courts where it has been validated (unless the opt out is withdrawn).
Reasons for opting out
Below are some reasons you may consider for filing an opt-out:
To remove the risk of central revocation action:
If the EP patent is of very high importance to your company, you may not want your EP patent to be subjected to a central revocation/invalidation proceeding in the UPC that could result in a single revocation/invalidation of your patent in all participating Member States where your EP patent has been validated;
Uncertainty regarding the new UPC system
it may take a few cases before the procedure is optimized, and therefore the outcome of the proceedings in the UPC is difficult to predict in the early years
Reasons for NOT opting out
Below are some reasons you may consider for NOT opting-out:
Save litigation costs by centrally enforcing:
the UPC system allows for a single litigation action against third parties for infringement if you wish to enforce your EP patent in multiple jurisdictions covered by the UPC where your EP patent has been validated;
The UPC will offer consistent enforcement of valid patents, with immediate Europe-wide3 effects of decisions, injunctions and damages
Therefore, if your existing European Patent is unlikely to be challenged, then you may consider keeping your patent opted in so you can centrally enforce it against third parties. If your EP patent is highly valuable, or if you are less confident in the ability of your patent to withstand a central revocation action, opt it out to make it more challenging and more expensive for third parties to “clear the way”.
A “sunrise” period will commence on 1 March 2023, during which applicants can register to opt out any existing EP Patents and EP applications from the UPC system before the UPC starts on 1 June 2023.
In short, during this “sunrise” period, Applicants/Patentees have two options for their EP patents/applications:
Opt out of the UPC.
Do nothing (and thus automatically fall under the jurisdiction of the UPC after 1 June 2023).
Should you wish to file an opt-out for your EP Patent(s) and/or application(s), please feel free to contact us.
What is the Unitary Patent?
Once the UPC becomes operational on 1st June 2023, Unitary Patents will become available via the European Patent Office (EPO). Upon receiving the Decision to Grant, applicants of a EP patent application can choose to obtain a Unitary Patent which offers patent protection in all participating EU Member States instead of validating the European patent in individual countries. This means that the Unitary Patent will always fall under the jurisdiction of the UPC, not national courts.
Therefore, this will be an option for European patent applicants to consider alongside their decisions on European patent validation countries. Typically speaking, obtaining a unitary patent potentially reduces renewal fees if the applicant validates in four or more Member States.
How to obtain a Unitary Patent
After the new system enters into force on 1 June 2023, applicants can obtain a Unitary Patent by filing a request for unitary effect at the EPO within one month from the grant date of a European patent together with a full translation of the specification into at least one other official language of the European Union.
The Unitary Patent System is a significant step forward in the European Union’s efforts to unify the patenting process in Europe. The creation of a single Unitary patent with uniform protection throughout 17 member states (and potentially many more to come), certainly changes the strategic considerations that patentees must consider when filing for patent protection in Europe. As mentioned above, there are pros and cons for participating in this new system, and applicants/patentees should consider the various relevant factors before deciding whether to opt-in or opt-out of the UPC for their EP patents/applications.
If you would like to have more information on this matter or would like to have our advice, please feel free to contact us at email@example.com.
More details of the UPC can be found here:
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
2 Also includes SPC’s (supplementary protection certificates) associated with the EP patents
3 Only include the 17 participating Member States to date: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Sweden, Slovenia