Entry into effect
Importance of sunrise period
Created by the Agreement on a Unified Patent Court (UPCA), the Unified Patent Court (UPC) will be a patent court whose decisions on, for example, the validity or infringement of patents will be enforceable in any EU member state that has ratified the UPCA (known as the "contracting member states").
The UPC will coexist with national courts, but national courts will keep jurisdiction only over national patents. The UPC will acquire exclusive competence over all European patents and applications.
Such exclusivity will be immediate for European patents that have a unitary effect (ie, unitary patents). For conventional European patents (ie, European patents that are validated country by country) the UPC will share jurisdiction with national courts for a transitional period of seven years from its entry into effect. This period may be renewed once for up to seven years.
Thanks to recent progress in its ratification, the UPCA is approaching its entry into force in 17 contracting member states.(1)
The provisional application phase of the UPCA has already started. Once the preparations are complete, Germany will ratify the UPCA, which will trigger the start of the three-to-four-month sunrise period. This will precede the actual entry into effect of the UPC, which will likely occur in early 2023.
The UPCA allows owners of conventional European patents, as well as applicants of European patent applications, to formally remove their European patent or application from the exclusive competence of the UPC through an opt-out application.
The opt-out option will be available as of the start of the sunrise period. It will remain open throughout the aforementioned seven-year transitional period.
Importantly, the opt-out option will no longer be available if an action relative to the same patent or application has already been brought before the UPC.
Opt-out applications will need to be lodged online through the UPC case management system.
Several important characteristics must be noted:
- Where the patent or application is owned by two or more parties, all owners or applicants must participate in the opt-out application.
- Licensees (both exclusive and non-exclusive) will not be allowed to lodge opt-out applications, but should be involved in the decision-making process where appropriate.
- Representatives will be allowed to file opt-out applications on behalf of the owner or applicant, provided some conditions are met.
- Opt-out applications may only be made in respect of all of the contracting member states for which the European patent has been granted or which have been designated in the application.
- Opt-out applications will extend to any existing supplementary protection certificate based on the European patent.
- Opt-out applications may be withdrawn at any time. However, if an action relative to the same patent has already been brought in a national court, opt-out withdrawal will no longer be possible. It is also important to note that once an opt-out application has been withdrawn, the lodging of a new opt-out application will not be allowed for the same patent.
The sunrise period will represent not only an early but also a safe opportunity to lodge opt-out applications. Indeed, filing an opt-out application during the sunrise period will avoid the risk of an earlier action being filed before the UPC, as the UPC will not have started to operate.
The start of the sunrise period therefore represents a milestone that should not be missed, and the full extent of the sunrise period should be exploited to ensure that:
- patent owners reach a decision as to whether to opt out for each of their European patents and opt-out applications are lodged before the expiration of the sunrise period;
- patent owners verify that all formal conditions are met; and
- licensees, including exclusive licensees, reach out to patent owners and negotiate a position as regards opting out with respect to the patents upon which their licence is based.
In order to reach opt-out decisions in time (ie, before the expiry of the sunrise period) it is strongly recommended to start portfolio reviews without delay, as a variety of factors should be taken into account for each European patent in the portfolio.
Indeed, a prima facie objective may be to avoid a nullity action before the UPC, with effect throughout the contracting member states in which the European patent has been validated. But such a concern should be balanced with the lost opportunities resulting from UPC avoidance, such as the missed opportunity of an enforcement ruling from the UPC with effect throughout the same contracting member states.
Each European patent in a portfolio will thus need to be carefully reviewed, to ensure an informed and effective decision as to opt-out is reached, taking into account the business strategy and individual impact of such patents.
For further information on this topic please contact Jean-Jacques Canonici at GEVERS by telephone (+32 2 715 3711) or email ([email protected]). The GEVERS website can be accessed at www.gevers.eu.
(1) Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.