The UPC to Open its Doors on 1st April 2023?

In a previous blog, I reported the imminent start of the Unified Patent Court (UPC) and explained the basics in relation to the UPC and the Unitary Patent (UP).   I can now report that the UPC’s Administrative Committee has confirmed its timetable for the start of the UPC and availability of Unitary Patents.

When?

Germany is expected to deposit its ratification of the UPC Agreement during w/c 19^th December 2022.  Provided that happens, the way is clear for the UPC to open its doors on 1^st April 2023, and the so-called ‘Sunrise Period’ for opting European patents out of the UPC will run from 1st January 2023 – 31^st March 2023. The UPC Administrative Council’s Implementation roadmap can accessed here.

What does this mean for you?

At the start date of the UPC, all pending European patent applications will automatically transition into the UPC, as will granted European patents (to the extent that they are validated in UPC Member States*) unless they are opted out.

Owners of granted European patents (validated in the UPC Member States*) and pending European patent applications can opt out of transitioning into the UP/UPC during the Sunrise Period mentioned above.  For patent owners that do not opt out during this period, it will still be possible to opt out of the UPC for at least 7 years following the start of the UPC on 1^st April 2023 if, and only if, a third party has not filed a challenge to the patent (at the UPC) before the opt-out application has been successfully registered. There is likely to be a delay (certainly weeks, if not more) between filing an opt-out application and its successful registration, during which such a challenge could be lodged at the UPC, which would cause the opt-out to be reversed.  Therefore, European patent owners definitely wishing to opt out of the UPC would be wise to do so well before 31^st March 2023 to ensure that it is registered in time.

Things to consider:

There are many different reasons why you might decide to opt out of, or remain opted into, the UPC when the time comes, but they all ultimately boil down to the answers to two main questions:

• How likely is it that you will want to enforce the patent across multiple UPC Member States against a possible infringer? Remaining in the UPC would enable you to do so via a single court action, the decision of which would take effect in all of the UPC Member States;

And

• How likely is it that the validity of the patent will be challenged by a third party? Opting out of the UPC would the risk of revocation via a single action that would take effect across all of the UPC Member States.

For example, if the patent is particularly important to your business because it protects an important product and/or it is being licensed, or if you believe the patent might be vulnerable to a validity challenge, then you may want to consider opting out. 

However, if you don’t have any validity concerns, and it is likely that you will want to be able to enforce the patent across multiple jurisdictions against a potential infringer, then remaining opted into the UPC would enable you to conduct a single court action via the UPC, which is likely to be significantly cheaper than multiple court actions in multiple national courts.

Of course, the answers to these questions may be rather more complex, and there is certainly no ‘one size fits all’ option.  In fact, you may even decide to adopt a different strategy for different patents or product portfolios, depending on the specific circumstances.

Opt-out applications

There is no official fee for opting out, but there will be a formal opt-out application, that will then be examined to ensure that it meets the formal requirements before it is officially registered.

An opt-out application must be filed on behalf of the true proprietor of the patent.  Therefore, if ownership of the patent has changed from what is shown on the European and/or national patent registers, we will need to ensure that the correct entity makes the request and that the official records are properly updated.

Need Help?

If you need help with this, or any other, IP matter, please do book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact/

_{*At the time of writing (October 2022), the countries that have ratified, or will ratify, the UPC Agreement before the start date of the UPC are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden, although it is possible that other EU countries could deposit their ratification of the UPC Agreement before 1^st April 2023}