Any business, wherever in the world it might be, which owns a European Patent needs to wake up now and decide what it is going to do in response to the likely introduction of the Unified Patents Court and Unitary Patent System. The way the UPC framework is set up means that there is every possibility that your collaborators or your great rivals or simply the passage of time (in the case for missing the deadline to apply for a Unitary Patent) can end up dictating how your own patents are enforced or managed in this new era, if you fail to plan properly now.
The French ambition drives the UPC project forwards
The French Presidency of the European Commission started at the beginning of January with a bold statement of plans and proposals. Amongst them was a stated ambition to get the UPC and UP systems operating by the end of the Presidency period. That is on 30th June 2022. That may be a little optimistic and previously we had expected the launch in “the second half of 2022“. Owing to uncertainties that persist resulting from the withdrawal of the UK from the UPC project and significant preparatory tasks that need to be undertaken before the UPC can formerly open up for business, the French objective may be overly optimistic, but no one should doubt that there is significant political momentum behind this project now, and it is unlikely that minor practical issues will be allowed to get in the way. The key point at which the countdown clock starts ticking is when Germany lodges its ratification papers. Our guess is that the desire of the French Presidency will be for that to happen during its term of office, as that would mean the objective of ensuring that the UPC happens is achieved. Assuming the lodgement takes place a little before the end of June, triggering the four month “final countdown” until the UPC commences operation, we can expect the court to be functioning some time in early autumn – probably September/October.
Businesses will need to strategise and get ready
Patent holders and those looking to challenge patents now need to consider the impact of the new patent regime in good time. The UPC regime is potentially enormously beneficial to patent holders. The UPC will have the ability to determine patent disputes on a pan-European basis in a single action with the power to order an injunction across Europe. Under the UPC regime, patent holders no longer need to initiate parallel patent actions in mutiple European jurisdictions, but on the flipside, if the case is lost, all its patent rights across participating states in Europe could be lost.
Obviously the UPC will be a new court operating a new system. Many companies will find the prospect of being involved at the “experimentation” stage of the process a bit high risk, especially if their business is highly dependent on sound patent protection. There will also be financial and budgetary issues that will need to be considered.
As explained in our previous post What is “Opting Out” and why does it matter? it is possible to opt out of the UPC system. The window to start the opt out process will open one month after the four month final countdown begins, so likely to be in the middle of summer 2022. If you do not actively do so, would be infringers may challenge the validity of your patents to be determined by the UPC. This risks the entire portfolio of designated European patents being wiped out in one court action in front of a new and unpredictable court (EP(UK) patents and those from other non-participating EU member states like Spain and Poland would survive but nothing else).
This can be avoided by proper planning, and using the opt-out system if desired, well in advance. We cannot emphasise enough, planning is crucial.
What are the key action points ahead of the commencement of the UPC?
We provide a checklist of items which in-house legal and patent departments need to be considering.
What can Gowling WLG do for you?
We have been following the progress of the UPC and UP proposals since they first emerged and have experts who are fully familiar with the rules and the nuances of the new system. We can orchestrate your approach, complete portfolio audits, plan licensing strategies, advise on the best approach to commencing or defending proceedings and, of course, through our EU offices, represent you in the conduct of any proceedings in the Unified Patents Court.
About the author(s)
Seiko Hidaka is a patent litigator with an international outlook, known for horizon scanning and thought leadership.
Gordon Harris is part of the Global IP Leadership Team for Gowling WLG, working across all the firm's offices to help build the practice and develop new specialisms.