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The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

Europe: Entry into Operation of The Unified Patent Court is Closer Than Ever

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The Preparatory Committee of the Unified Patent Court (UPC) has published a roadmap according to which, based on current state of the implementation thereof, the UPC could start receiving cases on April 1, 2023. As from that date, provided the roadmap plan is respected, a new patent litigation system will be available in Europe, and only “opted out” European patent applications/patents will be preserved from revocation by the UPC. However, requests for unitary patent protection will be available even earlier.

The UPC was officially established as a legal entity and the Protocol to the UPC Agreement on provisional application entered into force on January 19, 2022, thus triggering the provisional application period. In this period, the UPC Preparatory Committee has being performing all preparations for opening the Court. When the preparations are sufficiently advanced or completed, Germany, the last state required for the UPC Agreement to enter into force, will ratify the UPC Agreement. In view of the roadmap now published by the Preparatory Committee, the Court could start receiving cases on April 1, 2023. This means that the preparations, including recruitment activities of judges and administrative staff and implementation of the Case Management System, are essentially on track and that Germany would ratify the UPC Agreement in December 2022. Should Germany postpone the date of deposit of its instrument of ratification by one or more months, then the starting date of the UPC's operations would be postponed by a corresponding number of months. Moreover, as a confirmation that the preparations are well advanced, it has been announced that 85 judges were appointed to take up their duties as of the entry into force of the UPC Agreement and that the Presidium, which will take up its duties in advance of the start of operations of the UPC, was elected in accordance with the Statute. The list of the appointed legally qualified judges and technically qualified judges as well as the composition of the Presidium are available here.

Assuming that the roadmap plan is respected, then the three-month “sunrise period”, during which any European patent application/patent may be “opted-out” of the exclusive competence of the UPC, will start on January 1, 2023. Opting out will prevent third parties from lodging a single invalidity action before the UPC with effect across all 17 participating states initially forming the UCP territory, i.e., the member states of the European Union that have ratified the UPC Agreement. Opting out will still be available during a “transitional period” of at least seven years from April 1, 2023, provided no revocation proceedings have commenced before the UPC.

Additionally, as of the date of deposit of Germany's instrument of ratification of the UPC Agreement, i.e., possibly as from December 2022, both early requests for unitary effect and requests for delaying the issuance of a decision to grant a European patent will be allowed to be filed before the European Patent Office (EPO). The former action will let proprietors enforce a unitary patent from the very beginning of operation of the UPC, while the latter action will let applicants of European patent applications close to grant take benefit of unitary patent protection also for patents which otherwise would have been excluded from this possibility.

Under the same assumption, every European patent granted on or after April 1, 2023 may be registered as unitary patent throughout the participating states, upon a valid request for unitary effect to be filed with the EPO within one month after grant. Moreover, as from the same planned date, validity and infringement of both unitary patents and European patents non-opted out from the exclusive competence of the UPC will be centrally decided by the UPC.

Accordingly, there might be only a little time left for identifying all European patents to be opted out and European patent applications potentially eligible for unitary protection, and adapting filing and litigation strategies as well as contractual arrangements to the new European landscape for patent protection and litigation.