Final Countdown to the European Unitary Patent

At present, once a European patent is granted, it can be validated, maintained and enforced in the national courts of up to 38 member states (countries). Any enforcement (infringement action) or challenge (revocation action) to the patent must be heard in the courts of each country in which it is validated.

However, changes to the law to establish a Unified Patent Court (“UPC”) may take effect as early as this year, with a “sunrise period” of three months set to begin in September.

If you have a granted European patent, you should be deciding now whether to “opt out” of the UPC during the sunrise period. For pending European patent applications, you will have more time to consider whether to opt out of the UPC before your application is granted. Please contact us to discuss your options.

The UPC

The Unified Patent Court Agreement will establish a Unified Patent Court (“UPC”), a judicial body which will have effect in every state which has ratified the agreement. This gives rise to what is known as a “European Unitary Patent”. For a Unitary Patent, a single infringement action can be commenced before the UPC, instead of in the courts of each country in which it is validated. Conversely, a single revocation action can be commenced before the UPC, and if successful, will revoke the patent across all of the countries which have ratified the agreement.

The UPC is a game changer for patentees holding European patents, or pending European patent applications.

When will the UPC be established?

Once thirteen states have ratified the agreement, including France, the UK and Germany, it will come into force. Currently there are eleven states which have ratified the agreement, including France. Despite the Brexit process, the UK is set to ratify the agreement in April 2017. Germany is likely to act as the “gate-keeper” state and ratify in September 2017, giving time for the UPC to appoint judges and prepare to hear the first cases in December 2017.

One of the concerns during the negotiation of the agreement was that a large number of revocation actions would be lodged on the first day that the UPC opened. For this reason, beginning in September, a “sunrise period” of at least three months before the UPC opens will give patentees and applicants the opportunity to “opt out” of the UPC.

After the UPC opens, there will be a seven-year transition period during which patentees and applicants will still have the option to opt out of the UPC. Thanks to Article 83.4 of the UPC Agreement, the opt-out is not permanent, and patentees can “opt back in” to the UPC in order to commence a central infringement action, provided that no challenge to their European patent is pending before a national court of one of the member states.

What factors will affect my decision whether to opt out?

Both the Unitary Patent and the “status quo” nationally validated European patent have pros and cons. A number of factors will affect a patentee’s decision whether to opt out, including:

  • The number of European countries in which you might want to enforce your rights

  • Risk factors for a central revocation action, including opposition of the European patent application, and a high economic value for the patent

  • Costs of enforcement and maintenance

  • Technology area, as the UPC central division will hear cases from different technology areas in different countries.

Penny Walsh - March 2017

MoST Content Management V3.0.6374