The preparatory committee of the Unified Patent Court (“UPC”) has announced that the UPC will open its doors on 1 June 2023, with a three month “sunrise period” beginning on 1 March 2023. About time to start getting ready:
Why:
- Actively decide now whether or not you want the UPC to have jurisdiction over your existing European patents.
- Decide early if you want to have one single patent valid in all EU Member States (the “Unitary Patent”) and
- Leverage potential cost savings of the Unitary Patent (UP).
Unified Patent Court
The UPC will have jurisdiction for infringement and revocation actions both for Unitary Patents, and ‘classical’ European Patents. All granted European Patents and European Patent applications that are pending at the time of entry into force of the UP system will automatically fall within the jurisdiction of the UPC by default. UPC court decisions will have effect in all States participating in the UPC system.
To avoid the UPC having jurisdiction over existing European patents, patent holders will need to actively opt out of the UPC system. Patent holders will be able to file opt out requests before the UPC system comes into force starting on 1 March 2023 (the “sunrise period”). It is not possible to opt out a Unitary Patent (see below).
Unitary Patent and potential cost savings
As of 1 June 2023, it will be possible to obtain a single Unitary Patent valid in all Member States of the European Union that have decided to participate in the UP system. There are currently 17 such Member States: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Other EU Member States are likely to participate in the system in the future by ratifying the Unified Patent Court Agreement (“UPCA”). For all other States of the European Patent Convention that are not participating in the UP system, national validations will still be necessary.
Significant cost savings are expected by electing for Unitary Patents over traditional national validations and savings are expected to increase as more States ratify the UPCA. However, the potential cost efficacy of the Unitary Patent is complex and requires a multi-variate analysis. With this in mind, Gowling WLG has developed a cost calculator – the UPCalculatorTM – to help you work out if and when a Unitary Patent will be more cost effective than traditional national validations.
Unitary Patents are only available for European applications that grant after the UPC comes into force. As of 1 January 2023, European patent applicants are now able to file an early request for unitary effect or to file a request to delay grant to gain access to the Unitary Patent and leverage on potential cost savings. Several options also exist for applicants to delay prosecution of their applications before the start of the UPC.
How can we help?
• Get in touch to conduct an audit of your European patent portfolio
• Use our cost calculator (UPCalculatorTM) to decide whether to obtain Unitary Patents for your applications not opted out of the UPC.
• Visit our dedicated UPC webpage.
About the author(s)
Arnie Francis is a senior associate in Gowling WLG's IP team. He is both a UK (2015) and European (2016) qualified patent attorney.
Edith Penty Geraets is a chartered (UK) patent attorney and European patent attorney practising in Gowling WLG's IP Life Sciences team in Vancouver.
