The latest update on UPC/UP:
UP brings significant changes. The new proposed unitary patent (UP) system will start functioning soon after a long period of uncertainty. The unitary patent system will let to get patent protection in up to 24 EU Member States by submitting a single request to the European Patent Office (EPO). However, implementing this system took much more time than expected and was not so easy.
UP brings significant changes: Importance of UPC
The Unified Patent Court (UPC), which will have exclusive jurisdiction over unitary patents and traditional (current and future) European patents, is an essential part of the unitary patent system. Before the EPO can issue the first unitary patent, the UPC needs to come into existence. An international treaty established the UPC – the UPC Agreement (UPCA) of 19 February 2013. UPCA will enter into force on the first day of the fourth month after the 13th European Union member state has ratified and deposited the UPC Agreement, including those of the three-member states in which the highest number of European patents had the effect in 2012, namely Germany, France, and Italy.
From 2013 to the present, 16 contracting member states have fully ratified UPCA, including France and Italy. Here it is essential to mention that the first unitary patents will cover only the participating member states that have ratified the UPCA when requesting the unitary patent. Most likely first unitary patent will cover 17 countries only. It will not be valid in EU member states like Spain, Poland, and Croatia. They do not participate in the unitary patent system.
When will UPC Agreement enter into force?
Germany & ratification
As long as Germany has not finally ratified, the said UPC Agreement cannot enter into force. In other words, Germany is the last country to ratify the UPCA before the new Court can start. Unitary patents may be requested. Germany has faced three different constitutional challenges concerning the ratification of the UPCA. Fortunately, the German Constitutional Court has already rejected the latest challenges to German ratification. Many other significant developments happened recently. They support the view that UPC and UP will become a reality. They hope for that to happen around the end of 2022 or early 2023.
On 27 September 2021, Germany ratified the Protocol on the Provisional Application of the UPCA (PAP-Protocol). It also means that Germany intends to ratify UPC agreement soon finally. On 18 January, 2022 Austria deposited its instrument of ratification of the Protocol on Provisional Application of the UPC Agreement and became the 13th member country which ratified this Protocol. That means that sufficient countries have now finally ratified the PAP-Protocol and this last ratification allowed the provisional application period (PAP) to start.
The beginning of Unified Patent Court
As the UPC Preparatory Committee stated, this event marks the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organization. Final preparations for the Unified Patent Court (UPC) have officially started. During the PAP, there were a lot of technical and infrastructural preparations. For instance, they are finalizing the recruitment of the judges of the Court, training staff, and complete IT systems. They will allow others to enter into the operation of the unitary patent system. Hopefully, that will happen before the end of this year or the beginning of the following year.
The provisional application period is expected to last about eight months. When it is clear that the Court is functional, Germany will deposit its instrument of ratification of the UPCA. As soon as Germany‘s ratification process of UPC Agreement is completed, there are three-four months before it can come into force and the UPC can start to operate and take its first cases and unitary patents may be requested.
“Sunrise period” and “Opt-out” possibility
During this period, so-called “sunrise period” will start and will last about three months, during which patent proprietor may exclude the exclusive jurisdiction of the UPC for the life-time of the patent by filing an opt-out declaration regarding their traditional European patents or European patent applications, SPCs. Proprietors should already decide which their granted European patents, applications and SPCs they wish to opt-out, possibly together with their representatives, if they want to make use of quite a short sunrise period.
UP brings significant changes
The unitary patent will bring significant changes in the European patent system: the new system will have some advantages; however, it will be several disadvantages too. It is recommended to contact a European patent attorney regarding each particular case.
Should you have any questions regarding execution of EP validations using traditional, unitary, mixed ways; evaluation of EP portfolios to make opt-out decision for each particular case; representation before UPC and any other question related to the new Unitary patent system, do not hesitate to contact us or or visit our UPC introductory page.
