Significant changes are being made to the European patent system, and they will impact all European patent holders. In this article, we cover opting out during the sunrise period, what European patent holders need to consider, and more importantly, what they need to action.
Europe’s new patent system, the Unified Patent Court (UPC), looks set to launch on 1 April 2023 with the so-called “sunrise period” starting on 1 January 2023. For the start date to be official, Germany must deposit its UPC ratification instrument. However, this is now considered a formality.
Once open, the UPC will have competence to decide on all infringement and invalidity actions relating to Unitary Patents (UPs) and existing European patents in the countries signed up to the UPC (expected initially to be 17 EU countries1). The European Patent Office (EPO) will also start granting European patents with unitary effect (i.e. a Unitary Patent). You can find more details on the UPC and UPs here.
At this stage, you should consider whether or not to opt-out your existing European patents from the UPC’s jurisdiction.
Opting out during the sunrise period
In the three months leading up to the launch of the UPC, it will be possible to opt-out existing European patents and patent applications from the UPC’s jurisdiction before the start of the UPC. This three-month period is the so-called “sunrise period”.
An opted-out patent will remain under the jurisdiction of the national courts in which the patent is validated. This means that any invalidity and infringement proceedings relating to the patent must be brought before the national courts, not the UPC.
Any European patent not opted out will fall under the jurisdiction of the UPC. A single infringement action relating to the European patent in the UPC will be binding on all UPC countries. Conversely, a single invalidity action in the UPC could lead to central revocation of the European patent in all UPC countries.
After the sunrise period, there will be a seven-year “transition period” when it will continue to be possible to opt-out European patents and patent applications, provided no action has been brought before the UPC.
An opt-out can be withdrawn at any time during the transition period, if no action has been brought before a national court. Once an opt-out has been withdrawn, the patent will be, and will remain, under the UPC’s jurisdiction. It will not be possible to opt-out a second time.
You need to decide whether or not your European patents are to be opted-out. You might want to take a decision for your portfolio as a whole, or on a case by case basis for each patent separately.
The strength of your patent, the commercial importance of the technology covered by your patent, the likelihood of it being used in an infringement action, and your budget will all be important factors to consider when deciding whether or not to opt-out of the UPC. A further consideration is the uncertainty around the quality and consistency of decisions by UPC judges.
These are very important changes being made to the European patent system and they will impact all European patent holders. From here, you should:
- Tell us if you want any of your European patents to be opted out from the UPC – as this will require specific action to be taken. If no action is taken, your European patent(s) will automatically fall under the jurisdiction of the UPC.
- If you are not sure what choice is best for you, then contact your usual AJ Park attorney to discuss. Or alternatively get in contact with us so we can discuss with you.
1 Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.
