17 February 2023
Today (February 17th, 2023), “gatekeeper” Germany deposited its instrument of ratification of the UPC agreement. This is the last step that now officially triggers the entry into force of the Unified Patent Court on 1 June 2023. A sunrise period for opting out existing patents from the new system will start on 1 March 2023.
5 December 2022
The UPC (Unified Patent Court) has just announced that everything will be postponed by 2 months. The start of the sunrise period (during which ‘opt out’ is possible) is on 1 March 2023 with an effective start of the UPC on 1 June 2023. The starting date of transitional measures of the EPO to delay the issuance of a European Patent and/or to register an early request for unitary protection remains 1 January 2023.
17 November 2022
In its welcome message at the conference in Brussels on the Unitary Patent system, James Nurton, moderator of today’s event, shows a slide announcing that the new system, will start on April 1, 2023 with 17 participating EU Member States*. While we are still waiting for the exact date of ratification of the UPC agreement by Germany, the April 1, 2023 start date seems thus now (almost) certain.
Very Important to note, a sunrise period effective January 1, 2023** will allow users to take key steps regarding both:
- The Unified Patent Court.
For their entire portfolio of European Patents and applications, decide whether to take each title out of the UPC jurisdiction by lodging opt-out requests
- The Unitary Patent
For their European Patent applications reaching the grant stage, preserve unitary protection opportunities by filing specific requests
1. The new Unified Patent Court (UPC)
It is a common patent court, whose decisions on e.g. validity and infringement will be enforceable in any of the participating Member States. While national Courts keep competence for national patents, the UPC immediately acquires exclusive jurisdiction over European Patents having unitary effect (Unitary Patents) and will ultimately gain exclusive jurisdiction over all European Patents and Applications in the participating member states. In the meantime, for a first transitional period of 7 years the UPC will share jurisdiction with national courts for conventional European Patents and Applications
Lodging opt-out requests during the sunrise period
The UPC Agreement allows proprietors of conventional European Patents, as well as applicants of European Patent Applications, to formally remove the European Patent or Application from exclusive competence of the UPC, through an opt-out application.
The option for opt-out will be available as of start of the sunrise period and remain open throughout the 7-year transitional period. It is recommended to lodge opt-out applications before the end of the sunrise period, to avoid being blocked by a third party filing an action at the UPC.
2. The Unitary Patent
It represents a new protection option in the EU for European Patents granted by the European Patent Office. A Unitary Patent will be obtainable from a European Patent Application having reached the granting stage, through the filing of a request for unitary protection at the EPO. Contrary to a European Patent which evolves into a bundle of national patents, a Unitary Patent will constitute a single IP right, providing uniform protection across all participating EU Member States, and will be subject to a single renewal fee to be paid annually at the EPO.
Preserving Unitary Protection opportunities during the sunrise period
Applicants interested in obtaining Unitary protection and who have received an intent to grant communication from the epo (communication under Rule 71(3)) with a non-expired time limit during the sunrise period have the following 2 options:
-File a request with the EPO to delay issuance of the European Patent, as long as they have not approved the text intended for grant. This will ensure that the European Patent Application is still pending at the time of entry into effect of the Unitary Patent system, allowing applicants to file a request for Unitary Protection at that time
-Register an early request for unitary protection, which will be implemented by the EPO once the Unitary Patent system comes into effect. Delay of grant is not included in requests for early protection, and needs to be requested separately
OUR KEY MESSAGE:
The start of the sunrise period represents a milestone not to be missed and be actively exploited
1. It opens the door to the UPC opt-out option. The sunrise period window should be used starting immediately, to reach informed opt-out decisions, so that opt-out applications can preferably be filed before entry effect of the UPC.
2. It prepares the ground for the imminent advent of the Unitary Patent.
Applicants, particularly those having European Patent applications reaching the grant stage during the sunrise period, will need to make an informed choice between the new unitary protection and the conventional European bundle patents route.
3. These strategic options should be discussed with key stakeholders, such as licensees and may require update of agreements.
Don’t delay and reach out to your advisor at GEVERS to discuss how these important changes should be addressed by your organization.
*Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxemburg, Malta, the Netherlands, Portugal, Slovenia, Sweden
** Following a decision of the President of the EPO dated November 11, 2022, it is now confirmed that the sunrise period at the epo will start on January 1, 2023. The sunrise period for the UPC to lodge opt-out decision will likely also start on March 1, 2023, but still needs to be confirmed by the Unified Patent Court
Jean-Jacques Canonici – European Patent Attorney
Eric Bilhère – European and French Patent Attorney
François Gevers – European and Belgian Patent Attorney