The UPC will begin operations on 1 June 2023, and will have jurisdiction over questions concerning the validity and infringement of European patents (with or without unitary effect) as well as their associated supplementary protection certificates (SPCs) in the 17 EU member states who are participating in the UPCA (UPCA States). More member states are expected to join the UPC system in the future.
1. New choices of protection and forum
The brand-new “unitary patent”
From 1 June 2023, it will also be possible for a European patent to obtain unitary effect in all of the UPCA States, instead of providing protection on a state-by-state basis. On 1 January 2023, the European Patent Office (EPO) announced that applicants will be allowed to request delaying the grant of all soon-to-be-granted European patents.
For the life sciences industry, the choice between such a so-called “unitary patent” (UP) and a classical European patent (EP) will have an impact on the status of supplementary protection certificates (SPCs) depending on whether the patent the SPC is associated with has a unitary effect or not.
The long-awaited UPC
The UPC will have exclusive jurisdiction over questions of validity and infringement for UPs (and UP-associated SPCs), but will for the time being share jurisdiction over these questions for EPs (and EP-associated SPCs) with UPCA States’ national courts.
Concurrent jurisdiction between the UPC and the UPCA States’ national courts will terminate in favour of the UPC at the end of a transitional period, which will run for at least seven years from 1 June 2023. However, initiating infringement and/or validity proceedings for an EP (or EP-associated SPC) before a UPCA State’s national courts may permanently deprive the UPC of jurisdiction, and vice versa. The question will be whether carve-out will be allowed; i.e., whether the UPC could proceed with all designations of an EP except that which is being litigated nationally. This question was debated during a mock trial in Paris in November 2022 and there seemed to be a tendency towards carve-out. But the question is whether such carve-out is compliant with the terms and spirit of the UPCA. This will have to be decided by the jurisprudence of the UPC.
2. New opportunities and hazards
Different options for different strategists
For years, proponents emphasised that the UP may be cheaper than the EP, and that the UPC may be faster and more efficient than national courts. Meanwhile, detractors emphasised that the UP may be more vulnerable and inflexible than the EP, and that the UPC may be less predictable than the national courts. However, now that the UPC’s starting date is official, we should take note of the tools available for the eager, for the cautious, and even for the uncertain!
Early adoption for the eager
To encourage early adoption of the UP (and thus the UPC), the EPO is already accepting requests from applicants to whom the EPO intends to grant a patent (see Client Alert 2022-381 and Client Alert 2022-388 for details). As of 1 June 2023, it will be possible instead to request unitary effect prior to one month after mention of publication of grant of the patent in the European Patent Bulletin.
“Opt-out” for the cautious
The UPCA’s so-called “sunrise period” will officially begin on 1 March 2023, and will run until the start of the UPC. During the sunrise period, a patentee can choose to deprive the UPC of jurisdiction for any of its EPs by filing a so-called “opt-out” in this respect, before third parties would even have an opportunity to start proceedings before the UPC and consequently “lock” the EP in the jurisdiction of the UPC.
The UPCA’s transitional period will begin immediately after the end of the sunrise period. During the transitional period, it will be possible to file an opt-out in respect of EPs – and EP applications – filed or granted prior to the end of the transitional period.
Opt-outs will also be available for EP-associated SPCs during these periods.
Opt-outs can be withdrawn at any time during the transitional period.
Flexibility for the uncertain
While the UPC and UP present new opportunities and potential hazards, it may be possible to see for oneself where the grass is greenest.
The decision to obtain a UP from a parent application does not prevent seeking an EP from a divisional application, and vice versa. The decision not to opt out a parent EP does not prevent opting out a divisional EP, and vice versa. Thus, for the time being, it may be possible to construct patent families that include UPs, opted-out EPs, and EPs with concurrent jurisdiction. National and divisional patents might also be considered to diversify the portfolio and keep all options available.
An opt-out may be withdrawn to restore UPC jurisdiction if no infringement and/or validity proceedings have been started in a UPCA State’s national courts. Thus, it may be possible to take a wait-and-see approach with respect to the UPC.
Client Alert 2023-050