The Unified Patent Court has been officially launched and this event will affect your European patent applications and European granted patents.
The Unified Patent Court Agreement
The Unified Patent Court Agreement (UPCA) will enter into force at the beginning of next year, most likely on 1st April 2023. This event will have a relevant impact non only on future European patents, but also on already existing European patent rights.
In fact, the UPCA provides for the UPC to have jurisdiction on already granted and validated European patents, as well as on pending European patent applications. In other words, the UPC will handle the litigations related to European patent rights and the rulings delivered by the UPC will have effect in all the 17 countries adhering to the UPCA.
From one side, this advantageously allows to enforce or invalidate a patent through a single action affecting a plurality of countries through a procedure which is meant to be fast and reliable; a first instance’s ruling is expected to be delivered within one year from the litigation start.
From the other side, a centralized procedure implies the risk to invalidate, with a single ruling, all validations of a European patent (among the adhering countries). Furthermore, the centralized procedure will have higher costs than corresponding national legal actions. In addition, while in Italy invalidity and infringement of a patent are discussed within the same lawsuit, in some cases the UPC might follow a split path, where invalidity and infringement have to be discussed in front of two different court divisions.
During a transitional period ahead of the start of the new system, there is the possibility to exercise the right to be excluded from the UPC jurisdiction, also known as the right to opt-out.
An opted-out European patent will be litigated before the national courts where the patent has been validated. Thus, the European patent or, rather its national portions, will be enforced and litigated country by country, with independent outcomes according to the current practice.
Finally, a duly requested opt-out will apply for the entire European patent life, unless the patent owner decides to waive the opt-out right and to pass under the UPC jurisdiction. The waiver can be filed at any time of the patent life, unless a national litigation involving the European patent has been initiated. A waiver of the opt-out right is final and cannot be reversed.
The opt-out strategy
There are several factors to be considered when assessing the best strategy to adopt with respect to the jurisdiction to which subject your European patent rights.
In general, the main factors are economic assessments such as, for example, the ability to bear the costs of one or more centralised litigations, versus the ability to bear several litigations in several countries, the relevance of the patent for the market (the entire European market and/or the market of the single countries involeved), the number of member states where the patent title will have effect, and so on.
Of course, we are available to assist you in devising the opt-out strategy best suited to your needs.
However, it is important for European patent and patent application owners to early consider whether to exert the opt-out right and, in case, file a corresponding request.
Indeed, the opt-out right cannot be exerted (i.e. a European patent right is bound to the jurisdiction of the UPC) if, for example, a competitor has filed an invalidity action with the UPC before the opt-out is registered.
For this reason, there is a so-called sunrise period – which is expected to start in January 2023 – that will allow to file a request to opt-out before the UPC starts being operative.
To make an opt-out request, the following information is required:
- publication number of the European title,
- in the case of a European patent, the countries in which it was validated,
- name/company name of the applicant(s)/owner(s) (for each validation country),
- address of the applicant(s)/owner(s) (for each validation country), and
- contact information of the applicant(s)/owner(s) (e-mail).
It is crucial that the information regarding the publication number and the name of the applicant(s)/owner(s) is correct. Indeed, an opt-out request with incorrect data will not be considered valid and may be successfully challenged by third parties.
Thinx consultants are available to assist you in submitting opt-out requests for all the European titles for which you wish to exercise this right.
Update: According to the notification published by the UPC (Adjustment of the timeline – Start of the Sunrise Period on 1 March 2023 | Unified Patent Court (unified-patent-court.org)) the entry into force of the UPCA is postponed to 1 June 2023 and, consequently, the sunrise period will start on 1 March 2023.
Antonio Di Bernardo
Austria (AT), Belgium (BE), Bulgaria (BG), Germany (DE), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), The Netherlands (NL), Portugal (PT), Sweden (SE) and Slovenia (SI).
Art.83 of the UPCA