The long-awaited Unified Patent Court (the UPC), which will provide a new forum for patent litigation in 24 EU countries, is finally getting ready to open its doors. With the UPC will come the new unitary patent, a single validation of a granted European patent application that will take effect as a single patent spanning the participating countries. All European patent holders will need to review their patent portfolios and their patent prosecution strategies during the coming months, in particular to decide whether to “opt out” existing European patents from the jurisdiction of the new court.
The provisional application period of the Unified Patent Court Agreement has begun, with effect from 19 January 2022, following Austria’s deposit of its instrument of ratification of a protocol to the UPC Agreement. Technical and legal judges will now be appointed and trained, court buildings fitted out and IT systems completed. A lot of preparatory work has already been completed, such as the drafting of detailed rules of procedure for the new court. However, it cannot be said with any certainty how long the provisional application period will last. It appears that it is likely to be at least 6 months, perhaps nearer to a year. As well as completion of the administrative preparations, the participating countries will need to agree where the new location will be for the branch of the court’s Central Division that was originally to be in London. Various options have been suggested, including locating the branch in Italy or the Netherlands, or splitting the work of the branch between Paris and Munich, where the two other branches of the Central Division are already located.
Once everything is ready, Germany will deposit its instrument of ratification of the UPC Agreement itself, which will trigger the commencement of the “sunrise period”. This will last for 3 to 4 months. It is during the sunrise period that European patent proprietors will be able to register their “opt-outs” but we recommend that patent holders review their patent portfolios before the sunrise period starts, first, to ensure that there is sufficient time to conduct the review and, second, because any opt-outs must be registered by the legal owner of the relevant patent. The legal owner may not be the same as the name appearing on the patent register, especially where there have been assignments or group company reorganisations, and it will be vital to ascertain the true ownership before filing any opt-outs.
Marks & Clerk has been closely following developments ever since the UPC Agreement was signed in 2013 and is ready to guide you through the biggest development in European patent practice since the European Patent Convention. As well as webinars and materials on our website, we will be communicating directly with our clients over the next months, to explain and assist with the steps that will need to be taken to prepare for the unitary patent and the UPC. If in the meantime, if you have any queries please let your usual Marks & Clerk contact know, or please contact us at UPC@marks-clerk.com.
