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The Unitary Patent will bring significant changes
2022 02 23

The latest update on UPC/UP:

 

After a long period of uncertainty, it seems that a new proposed system of unitary patent will start functioning soon indeed. 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.

 

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. The UPC was established by an international treaty- 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 day 16 contracting member states have fully ratified UPCA, including France and Italy. Here it is important to mention that 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 and will not be valid in such EU member states as Spain, Poland, and Croatia as they do not participate in the unitary patent system.

 

When will UPC Agreement enter into force?

As long as Germany has not finally ratified, the said UPC Agreement cannot enter into force, in other words, Germany is the last country that needs to ratify the UPCA before the new court can start, and unitary patents may be requested. Germany has faced three different constitutional challenges in relation to ratification of the UPCA. Fortunately, though, the German Constitutional Court has already rejected the latest challenges to German ratification. Many other important developments have been done recently, supporting the view that UPC and UP will become a reality 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). This 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. This means that sufficient countries have now finally ratified the PAP-Protocol and this last ratification allowed the provisional application period (PAP) to start.

 

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 now officially started. During the PAP, the technical and infrastructural preparations for the UPC, such finalizing the recruitment of the judges of the Court, training of staff, completion of IT systems and other will be made to allow the entry into operation of the unitary patent system before the end of this year or at the beginning of the next 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.

 

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.

 

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