A "new era of IP protection in Europe” as the sun (finally) rises on the UPC

On 17 February, Germany deposited its ratification of the Agreement on a Unified Patent Court (the “UPCA”). This was the final step in making the Unified Patent Court (the “UPC”) and the new Unitary Patent a reality and has cleared the path towards the UPC opening its doors, and the Unitary Patent coming into play, on 1 June. This is a major step forward and marks the start of what is arguably the most significant development in this space since the European Patent Convention was signed 50 years ago.

What is a Unitary Patent?

A Unitary Patent, or a “European patent with unitary effect” to give it its full name, is a single, unitary right that can be used to provide patent protection in all EU Member States that have ratified the UPCA. This stands at 17 countries at the date of writing. A Unitary Patent is to be distinguished from the existing, classical European patent which gives its owner a bundle of national patent rights in those countries that have been designated and which need to be enforced on a country-by-country basis.

Granted by the European Patent Office (the “EPO”), the process for obtaining a Unitary Patent will be similar to that for classical European patents, but with the applicant having the right to choose unitary effect within a month of grant. Importantly, the territorial scope of a particular Unitary Patent will be determined on the date of registration of unitary effect by the EPO. So, assuming no further countries ratify the UPCA between now and 1 June, any Unitary Patents registered on day one will have effect in the 17 countries that have already ratified the UPCA. Once granted, the territorial scope will remain the same for the lifetime of the patent and will not extend to any countries that subsequently ratify the UPCA. In practice, that means we’ll end up with different generations of Unitary Patents with different territorial scope.

What is the UPC?

Alongside the Unitary Patent, we will also be getting a new court – the UPC. The UPC is a supra-national court that will have jurisdiction to determine most actions (including infringement and validity actions) relating to Unitary Patents, classical European patents (effective in participating EU Member States) that have not been opted out (see below) and Supplementary Protection Certificates issued for a product covered by either such patent.

Such a centralised system presents benefits and risks when contrasted with the decentralised enforcement system for classical European patents. The primary benefit is that successful infringement decisions before the UPC (and, accordingly, any remedies, such as preliminary or permanent injunctions) will be effective across all participating EU Member States. The flip side of this is that a patentee can have their European patents (both unitary and non-opted out classical) knocked out across all such Member States in a single action.

What is the impact of Germany depositing its ratification of the UPCA?

Germany’s ratification of the UPCA has triggered the countdown to the UPC opening its doors, and the Unitary Patent becoming available, on 1 June.

It also triggered a three month “sunrise” period, which began on 1 March and which will run until 31 May. During this period, patentees are able to start opting their classical European patents out of the UPC’s jurisdiction. If a European patent isn’t opted out before 1 June, it will be subject to the dual jurisdiction of both the UPC and the national courts in those designated countries that are participating in the UPC system. After 1 June, patentees will continue to have the ability to opt out their classical European patents during a 7-14 year transitional period, except where proceedings have already been initiated before the UPC in respect of the relevant patent.

Alongside the opt out process, since 1 January, the EPO has made two important transitional measures available to applicants who have received an “intention to grant” communication from the EPO in respect of live applications. First, those applicants can file early requests for unitary effect, which will allow the EPO to register unitary effect immediately on (or shortly after) grant, following the Unitary Patent system coming into play. Second, those applicants may request a delay in issuing the decision to grant, so that they don’t miss out on the opportunity to opt for unitary effect.

Comment

The start of the UPC system is undoubtedly a major development. Patentees will have to assess a revised landscape of patent rights and consider how best to navigate this going forwards.

Alongside the critical questions of whether to:

• opt any existing or future classical European patents out of the UPC’s jurisdiction;
• seek unitary or classical European patent protection for new inventions; and
• take advantage of any of the EPO’s transitional measures,

businesses involved in this sphere would be well advised to review their contractual arrangements (including patent licences and collaboration agreements) to ensure they are fit for purpose in this new world.