The Unified Patent Court (UPC) Preparatory Committee announced this week that it is now working on “the assumption that the Provisional Application Phase (PAP) will start end of spring 2017, presumably in May, and that the Agreement on the Unified Patent Court (UPCA) can enter into force and the court become operational in December 2017.”

What does this mean?

The commencement of PAP means that the UPC will be established as a functioning legal body, and that practical preparations for the opening of the UPC can be taken forward. These include the UPC's formal governing bodies commencing operations, judicial interviews taking place, and judicial appointments being made and confirmed.

Provisos to the UPC start date

However, the timetable comes with the “clear disclaimer that there are a number of factors that will dictate whether it is achievable”. The most important of these are the necessary ratifications of the UPCA (including ratification by the UK), and accession to the Protocol on Provisional Application. If these ratifications are not achieved, then this timeline will be disrupted.

The UK’s announcement of its intention to proceed with ratifying the UPCA has removed the most significant obstacle to UPC implementation, and Germany has always been expected to ratify shortly after the UK does. In principle, therefore, a December start date for the UPC looks realistic.

Practical points for patent owners

The UPC Preparatory Committee specifically announced that the start of the sunrise-period for opting out European patents from the UPC system will be in early September 2017. This will provide a minimum of three months for patent owners who wish to opt out their patents to do so before the UPC becomes operational in December 2017.

This is the first time even an indicative date has been given to the start of the opt-out sunrise period. Patent owners should therefore prioritise their analysis of their portfolios to identify which patents should be opted out, if any.

Patent owners should also be reviewing patent licences and the extent to which licensees can unilaterally litigate in the UPC without needing the patent owner’s permission, as commencing litigation in the UPC will subject the patent to the UPC’s jurisdiction. Any such licences will need to be amended.

Client Alert 2017-021