Time to get ready for the Unitary Patent system

The new Unitary Patent system consists of two main pillars: the Unitary Patent or UP, a single patent offering uniform protection in the participating EU Member States on a one-stop-shop basis following a single request to the European Patent Office (EPO), and the Unified Patent Court or UPC, a centralized court comprising judges from all participating EU Member States that will decide on the infringement and validity of both Unitary Patents and “classic” European Patents. Ahead of the expected launch of the Unitary Patent system, some transitional measures are now available.

The 17 states that will participate in the Unitary Patent system when it starts are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. The system is expected to become operational 1 June 2023. Therefore, If you have not done so yet, you should start getting ready for it now. Here are in short the main points you should focus on.

First, if you have filed a European patent application for which the examining division has decided that a European patent can be granted and you received the text of such patent, the following two measures are available:

• An “early request for unitary effect” can be filed now already, thus before the start of the Unitary Patent system, what will allow for the EPO to register unitary effect immediately at the start of the system and for the applicant to obtain a Unitary Patent on that date;
• A “request for delay in issuing a decision to grant a European Patent” to avoid that a European patent is granted before the start of the Unitary Patent system, as would otherwise be the case, and make that European patent eligible for unitary effect.

Secondly, if you have European Patents (applications) in your portfolio, you should decide whether or not you want to maintain the possibility that future proceedings relating to such patents are brought before the new Unified Patent Court (UPC). In case you prefer not to, hence you want that possible future proceedings can only be brought before national courts on a country-by-country basis as is the case now for European patents, you should file a so-called “opt-out” from the UPC.

Opt-outs can be filed during the so-called “Sunrise period”, a period expected to start on 1 March 2023, i.e. 3 months before the expected launch of the Unitary Patent system. Since it is no longer possible to opt-out from the UPC once proceedings have been brought before the UPC, the Sunrise period ensures that patentees can opt-out before proceedings are initiated.

Patentees should thus start considering now which patents they will carry into the new system and which patents they will “opt-out”. Different factors play a role in this decision. On the one hand, the new system ensures a better enforcement of patent rights, increased legal certainty, streamlined/harmonized jurisprudence, and the possibility to obtain a judgment that is enforceable in all member states under the same conditions as a national judgment. On the other hand, the new system entails a risk of central invalidity of a patent and the fact remains that the decisions of the UPC (for now) are unpredictable given the absence of any case law. The balance should be made on a patent-by-patent basis, for example based on how strong the patent in question is.

The opt-out will take effect upon its entry in the register. It will be possible to withdraw an opt-out at any time unless an action has already been brought before a national court.

It is important to note that the possibility of opting out or bringing an action before a national court will only be available for “classic” European patents granted or applied for before the end of the transitional period of seven years, which may be prolonged by up to seven more years. Opt-out or bringing an action before a national court is not available for Unitary Patents.

The 1^st of June 2023 will be there before you know it. Preparing for the new Unitary Patent system should therefore be a top priority for all patentees right now. CAPE IP will be very happy to assist you to make the right choice and to answer all other queries relating to the Unitary Patent system.

CAPE IP

8 February 2023