The Unified Patent Court is a new European Union court with jurisdiction over infringement and revocation actions for a new Unitary Patent as well as existing European patents in up to 25 EU member states.
The Unitary Patent (UP) will be a single patent granted by the European Patent Office and will cover at least 17 EU member states once the Unified Patent Court (UPC) launches in the coming months. Other member states are likely to join the system later. At present, after grant of a European patent, it must be converted into individual national patents applications in individual states through the so-called “validation” process.
The provisional application phase of the UPC began on 19th January 2022 following Austria’s deposit of its instrument of ratification on 18th January. The final preparations for the opening of the UPC thus begin now.
Provisional application phase
The provisional application phase allows for many of the Articles of the UPC Agreement and UPC Statute to come into effect ahead of the start of the UPC system. These include articles relating to the structure of the court, appointment and training of judges, and financial provisions, which allow the machinery of the court to be established before its official start.
It is expected that there will be a “sunrise period” of a few months before the UPC officially opens its doors, during which existing European patents and applications can be opted-out of the UPC’s jurisdiction. If existing European patents are not opted-out of the UPC’s jurisdiction, then it will be possible for third parties to bring a revocation action before the UPC, potentially resulting in the revocation of all national patents derived from the European patent in countries that are parties to the UPC. This is because, as mentioned above, the UPC has jurisdiction over all European patents including those that issued prior to implementation of the UPC, unless the opt-out option is utilized.
There will be a transitional period of at least 7 years following the start of the UPC. European patent applications filed before the end of the transitional period can be opted-out of the UPC’s jurisdiction. Opted-out applications can be opted back in when the patent is granted, or indeed after the patent has been granted provided action before a national court has not already commenced.
For applicants that want to opt-in to the UPC, the EPO has announced the option for applicants to delay grant of their currently pending European patent applications until after the start of the UPC. This will allow applicants to obtain UPs for applications that are already close to grant. It should be noted, however, that UPs cannot be opted-out of the UPC’s jurisdiction, so delaying grant and obtaining an early UP is a firm commitment to using the UPC in potential disputes.
The beginning of the provisional application phase is a significant milestone in the long history of the UP and UPC and signals that the court will, finally, come into being in the following months. It is possible that the court will begin in earnest later in 2022 or early 2023.
The clock is now ticking for applicants to decide whether to opt-out their existing European patents from the UPC system. Given the risk of central revocation of a bundle of national patents, this is a question that applicants will need to consider very carefully over the next few months.
Beyond that, applicants will need to decide whether to enthusiastically participate in the UPC system going forward, or to hedge their bets and opt-out current and future applications while retaining the option to use the UPC system under certain circumstances.
I work as a European & UK patent attorney at Berggren, helping clients to secure and protect the rights for their inventions across Europe. I enjoy taking the complicated field of European patent law and turning it into concrete, relevant advice for our clients and their businesses.