The 1st of June, 2023, signifies a historic moment as the Unified Patent Court (UPC) and the Unitary Patent (UP) system officially came into effect.
The new Unified Patent Court (UPC) is established by an international agreement between the participating EU Member States. UPC has exclusive jurisdiction over all Unitary Patents. Moreover, the jurisdiction of the UPC also covers all classic European patents already granted by the EPO and published European patent applications and SPCs unless an opt-out is lodged.
If an opt-out request is filed, it removes the classical European patents or published applications from UPC jurisdiction. Any action for infringement or revocation of such an opted-out patent or SPC would need to be brought separately before the relevant national court in each country. The most crucial reason to opt-out is to avoid a UPC revocation action and not lose patent protection in many countries simultaneously.
During the three-month sunrise period, which ended on the 31st of May, 2023, more than 480,000 European patents and European patent applications were opted out. This number is quite impressive, as EPO granted about 1000 000 patents in 2013-2022.
Thus, opt outs were filed for ~ 50% of all eligible patents and patent applications and this number will increase.
The most likely UPC will be an attractive jurisdiction for interested parties who missed the EPO opposition period. On the 2nd of June, the UPC Presidium announced that hat eight cases have already been initiated before UPC.
It is anticipated that a considerable number of patent holders will persist in submitting opt-out requests prior to the European patent being granted. An opt-out from the UPC’s jurisdiction will remain available for a minimum of the next seven years (only when no proceedings in relation to that patent have yet begun before the Unified Patent Court).
The opt-out will be effective for the entire life of that European patent, including after grant and national validations.
With the UPC now fully operational, patent holders are recommended to opt-out their patents if they aim to protect themselves from the potential risk of a third party initiating a central revocation proceeding at the UPC.
Got questions? Want to evaluate your patent portfolio? Reach out to our team and consult on a case-by-case basis.