Have you heard of the new patent system that is about to launch in Europe? Do you know how it will affect both your existing and future patent rights? Or maybe you are sighing because it sounds like you will have to take even more decisions in relation to your patent portfolio? Don’t worry, we are here to help you and will guide you to the decisions most suitable for your organisation.
The introduction of the Unitary Patent and the Unified Patent Court represents a major change in the European patent landscape. This new system, offering unitary patent protection across many EU states, is finally, after years and years in making, actually on the way.
The Unitary Patent
The Unitary Patent (UP) is, as the name suggests, a single patent with unitary effect in all participating countries. At the moment, this includes 17 countries across the EU, with Sweden, of course, being one of them. Further EU countries may be added as time progresses, but it is worth noting the new system is an EU initiative and that non-EU countries are not and will not be part of it.
When the new system has arrived, it will no longer be necessary (although you can still choose to do so) to validate a granted European Patent (EP) individually in all the countries of interest. Instead, you can obtain a single patent covering all participating countries, meaning only one payable renewal fee for all those countries, only one translation necessary for all those countries, and the possibility to stop infringement in all those countries through one single infringement action. This will likely be a pleasant development for many applicants. However, UPs also have some drawbacks to be aware of, the most important one being the risk of a central revocation action which can invalidate your UP in all the participating countries in one go.
The new UP system will function in parallel to the current system, and it will, as mentioned above, still be possible to validate EPs in individual countries as you do now.
The Unified Patent Court
With the arrival of this new UP system, a new court, the Unified Patent Court (UPC), is also introduced. The UPC will be the court where litigation of UPs (both revocation and infringement actions) takes place, and decisions by the UPC will have unitary effect throughout all of the participating countries.
However, importantly, the UPC will also have jurisdiction over all EPs validated in the classical way in participating countries, this applies even to EPs granted prior to the launch of the UPC. In other words, if you have a patent granted by the EPO, it falls under the jurisdiction of the UPC once the UPC is up and running, unless you choose to opt-out from the UPC, see below.
The possibility to opt-out
During a transitional period of 7 years (possibly extended to up to 14 years) from the start of the UPC, the proprietor of a classically validated EP can opt-out that patent from the competence of the UPC, provided that no action has already been taken in relation to that patent at the UPC.
Opting out an EP means that the patent will fall under the sole jurisdiction of the national courts for the lifetime of the patent, in the same way as it is today. However, a decision to opt-out can be withdrawn (opt-in) provided that no action in the meantime has been brought against the patent before a national court. The possibility to opt-out applies to any EP granted or applied for prior to the end of the transitional period, and it will be possible to file opt-outs from the start of a so-called sunrise period. The sunrise period starts 3-4 months before the launch of the UPC and ends at the start of the transitional period.
When will the new system launch?
It is still uncertain exactly when the new system will launch, but it could happen as early as October 2022, or perhaps more realistically in early 2023. When Austria in January 2022 became the thirteenth country to participate in the provisional application of the UPC agreement, the preparations for the launch of the new system started. Once the preparations are sufficiently far along, Germany, acting as the Gatekeeper, will deposit its instrument of ratification, which will initiate the sunrise period.
Decisions, decisions, decisions
The introduction of the UP and the UPC will have implications for all applicants and patent proprietors interested in patent protection in EU countries. All proprietors and applicants should consider how to take advantage of the opportunities that are offered by the new system while also protecting themselves against any drawbacks that may arise.
As a patent proprietor, the most important thing to note is that if you do nothing, things will change for you. It is therefore time to start thinking about the UPC so that you can make informed and strategic decisions, rather than letting the decisions be made for you.
The first decision you need to take is whether to opt-out your existing EPs and EP applications from the UPC. It is far from an easy decision, and there are many considerations to take into account. Seeing that the new system, and the sunrise period, is only months away, we would advise all EP proprietors to start reviewing their patent portfolio in order to decide on a strategy.
We are, of course, here to help you, and given the potential impact of any strategic decisions you may take (or indeed not take), and the complexity of the new patent landscape, we are always available for a meeting where we can give you the advice that you need.
Please feel free to contact any one of us if you have any questions in relation to the UP, the UPC, or any other aspect of intellectual property.