What are the next steps?
What is a UP?
What is the UPC?
Which countries are covered?
What choices are available to patent owners and applicants?
After many years of difficulties, the combined unitary patent (UP) and Unified Patent Court (UPC) project is about to become a reality.
Germany's ratification of the Protocol on Provisional Application (PPA) in August 2021, along with the subsequent deposit of the PPA ratification instrument in September 2021, has marked an important milestone towards the project's entry into force. What previously stood in the way was the necessary ratification of the PPA by one more member state, which is no longer the case. The final steps can now get underway.
On 18 January 2022, Austria filed its PPA ratification instrument. The provisional application phase for the UPC can now begin, allowing for its operational preparations. When Germany is reassured that the preparatory works for the UPC are sufficiently advanced, it will ratify the UPC agreement, which will trigger the start of the UP/UPC package three to four months thereafter.
It is currently expected that UPs and the UPC will enter into effect by the end of 2022 or in early 2023.
A UP is a new protection instrument created by European regulations. Alongside the existing systems of national patents and European bundle patents granted by the European Patent Office (EPO), UPs will represent a new option for patent protection in the European Union.
UPs will be obtained on the basis of a granted European patent. To that extent, nothing will change in the pre-grant phase. Post-grant, a request for unitary protection can be made to the EPO in order to obtain a UP.
Contrary to the existing European patents, which evolve into a bundle of national patents via a validation process, a UP will remain a single property title across all participating EU member states, providing uniform protection for the entire duration of the patent.
UPs will also be subject to a single annual fee, which must be paid centrally at the EPO. They will only lapse, be revoked, limited and/or transferred for all participating member states as a whole.
The UPC is a new patent litigation forum for the European Union that was created by an international agreement. This newly established Court will not have authority over national patents as its exclusive authority is over UPs and European bundle patents.
However, one exception exists: during the seven-year transitional period (which may be renewed once), it will be possible to withdraw European bundle patents from the UPC's authority, through an opt-out procedure. Opting out will be carried out via the UPC opt-out register, which will be open three to four months before the entry into force of the UPC.
The new Court is formed of both central and local/regional divisions. To that end, validity and infringement proceedings will largely be handled separately. In both divisions, qualified judges with technical and legal backgrounds will be appointed.
The key impact of the UPC will come from the international nature of its rulings; they will affect all contracting member states that have ratified the UPC agreement.
UPs and the UPC will come into force at the same time and be closely linked, as it will only be possible to request unitary protection in respect of EU member states that are also participating UP member states and that have ratified the UPC agreement. Without exception, the UPC will have exclusive jurisdiction for any UP.
In principle, the UP/UPC system is open to the 27 EU member states. However, Spain has not joined the system and Poland and the Czech Republic have both indicated that they will not become UP member states. Further, Croatia became a member of the European Union after the adoption of the UP/UPC package and has not yet signalled whether it will join the system. Currently, when including Germany, 17 EU member states have ratified the UPC agreement, but additional countries will likely be part of the UP/UPC package once it starts (to see a map of the covered countries, click here).(1)
What choices are available to patent owners and applicants?
Users in the European Union will have one more option to consider for patent protection aside from national filings and conventional European bundle patents.
The opportunity for uniform protection across most of the European Union will need to be balanced by the equally uniform impact of lapse and revocation. Moreover, the impact of the UPC being the only enforcement and validity forum will need to be studied.
With respect to patent enforcement, applicants and owners of European bundle patents will need to carefully review and audit their portfolio, preferably before the entry into force of the UPC. They will need to make reasoned and timely opt-out decisions for each of their European bundle patents and applications.
As part of such an audit, a risk/benefit analysis will need to be conducted for each application and patent. Such analysis should consider the value of a single enforcement ruling across the validated territories versus the risk of the patent being revoked or limited across the same territories through one central decision.
For further information on this topic please contact Jean-Jacques Canonici or Stijn Lagaert at GEVERS by telephone (+32 2 715 3711) or email ([email protected] or [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 are joining the UP system. Croatia, Cyprus, Greece, Hungary, Ireland, Romania and Slovakia have not yet joined (Croatia became a member of the European Union after the adoption of the the UP/UPC package and has not yet signalled whether it will join the system). The Czech Republic, Spain, Poland and the United Kingdom are not joining the UP system (the United Kingdom was one of the signatories in 2013 but since 2020 it is no longer a member of the Preparatory Committee because of Brexit). Please note that this information is correct as of January 2022 and outstanding ratifications will likely take place successively, resulting in different generations of UPs with different territorial coverage.