Are you in or out? The Unified Patent Court

Article  \  28 Nov 2022

There are important changes being made to the European patent system and they will impact all European patent holders. In this article, we cover the key action you need to take in What you need to do next, as well as the Unified Patent Court and New Patent right – EU Unitary Patent.

There are important changes to European patent law coming into force soon that will affect European patents and patent applications.

The proposed Unitary Patent Package consists of a new patent right (Unitary Patent), and a change to patent court oversight (Unified Patent Court). At this stage, you will need to decide on whether or not to opt-out of the new Unified Patent Court (UPC). Read more about the launch of the UPC and Unitary Patent (UP) here.


Unified Patent Court

The UPC will have jurisdiction over infringement and invalidity proceedings for all Unitary Patents, as well as all currently granted European patents for most of the EU, when the UPC agreement comes into force. The new system is expected to start from 1 April 2023 and will initially apply to 17 EU states1.

For a transitional period of at least seven years, it will be possible to "opt-out" of the UPC, if desired. Opt-outs are only possible if no proceedings have started before the UPC. However, your existing European patents can be opted-out during a three month "sunrise period" expected to start on 1 January 2023, to ensure that the opt-out has been registered before the start of the UPC.

There are several benefits and drawbacks to this proposed new court.

We consider there are two important points that will help you make a decision at this stage:

  • If you opt-out - the new court will not have jurisdiction over your existing European patents. The old regime will continue to apply, with your European patents being challenged or enforced at the national level. Importantly however, your European patents will not be subject to central revocation actions before the UPC. An opt-out will apply for the whole lifetime of the patent. However, an opt-out can be subsequently withdrawn, should you decide you want to start a central infringement action before the UPC.
  • If you don't opt-out - your existing European patent can be centrally enforced, or revoked, by a single court action in the UPC, in all UPC contracting states. Under the old regime, outside the nine-month opposition period at the European Patent Office, European patents were challenged or enforced at the national court level, i.e., in separate proceedings in France, Germany, Italy etc. Under the new regime, a single UPC-wide decision on infringement can be obtained. Importantly however, your European patent could also be centrally revoked by a single UPC-wide decision.

If you don't opt-out, there is no cost involved. This is the default case for all European patents already granted at the start of the UPC system or thereafter. For opt-outs, there is no official fee but there will be a cost associated with our European associate processing the opt-out at the Registry of the UPC. A single opt-out covers the whole bundle of national patent rights based on a single European Patent.

In summary, you need to decide whether or not your European patents are to be opted-out. As an opt-out requires the consent of all co-owners, you will need to agree a strategy with any co-owners before you can file your opt-out. You might also want to take a decision for your portfolio as a whole, or on a case by case basis for each patent separately.


New Patent right – EU Unitary Patent

There is also a new patent right coming into effect. The unitary patent (UP) will be a European patent, granted by the European Patent Office, and which will have unitary effect across all the UPC contracting states. This is different to the traditional European patent which must ultimately be validated as separate patents in each country where patent protection is required. Unitary Patents cannot be opted-out of the Unitary Patent Court.

This new patent will be available when European patents are granted going forward. We will provide more information when your relevant patent applications are granted and this option has become available. From 1 January 2023, you will be able to request that grant of a European patent be delayed until the UPC agreement comes into force, to preserve the possibility of obtaining a Unitary Patent. 


What you need to do next

These are very important changes being made to the European patent system and they will impact all European patent holders. From here, you should:

  1. Tell us if you want any of your European patents to be opted out from the Unified Patent Court system – 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 Unified Patent Court.
  2. 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 Currently expected to be 17 UPC contracting states when the UPC opens: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
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