The most significant change to European patent law in the past 50 years is coming. The long-awaited Unified Patent Court (UPC) and Unitary Patent (UP) are expected to enter into force on June 1, 2023, with the sunrise period beginning on March 1, 2023. This new system will significantly change the European patent landscape and should be at the top of your IP strategy agenda.
Which countries will be concerned?
The UPC and UP will concern all UP/UPC Member States; that is, up to 24 EU Member States that have signed and ratified the UPC agreement. (So far, Spain, Poland and Croatia will not participate, and the UK, Norway and Switzerland cannot participate as they are not EU Member States.)
What is the Unified Patent Court?
The UPC is a new court that is intended to rule on European patents for all UP/UPC Member States expected to take effect June 2023. Within this new court, parties will be able to enforce patent rights across all participating Member States in a single enforcement action, and patent owners will be able to seek cross-border injunctions and damages for the first time in Europe.
The UPC intends to be faster than other national courts and presumes to be more cost-efficient than multiple national proceedings as parties will only have to pay one court fee and one set of legal costs.
The UPC will be established as a central patent court (with central, regional, and local divisions). It will have exclusive jurisdiction over all UPs and eventually over classic European patents that have not yet been opted out of the system (except for some jurisdiction rules between the UPC and national courts).
What is a Unitary Patent?
Unitary Patent or UP is a shortened version of “European Patent with Unitary Effect.” A UP will provide a single patent right covering all Member States. This will make it possible to get patent protection across all UP/UPC Member States with a single validation process and a single set of annuities.
The unitary effect will only be available for European patent applications that are yet to be granted. As soon as a European patent is granted for these applications, the patent owner will have one month to seek a unitary effect. After that, the patent can only go through a classic validation process.
Further, the unitary effect will only be available to UP/UPC Member States. For Member States of the European Patent Convention, only the classic validation process remains available.
What should companies do to prepare?
It is crucial that all companies operating in Europe understand the impact of this new system and factor it into any existing or new patent strategies they may be developing for their European operations. Patent owners should, at a minimum, consider the following:
- Seek a unitary effect for their soon-to-be-granted European patents.
- Opt out their existing “classic” European patents from the UPC system during the transitional period.
- Review existing agreements that involve European patents.
- Adapt their patent filing strategy in Europe accordingly.
- Review whether competitors may enforce European patents in Europe.
Reed Smith’s European patent litigators and patent lawyers have the qualifications to represent clients before the UPC. Our team has been staying abreast of all the latest developments and can assist clients in planning their UPC patent strategy.