Insights: BREAKING NEWS: The UPC is due to open on 1st June 2023

After years of uncertainty in the timeline of the Unified Patent Court (UPC), it has just been announced that Germany will ratify the UPC Agreement on 17th February 2023. This ratification will finally set the UPC opening date as 1st June 2023. From that date onwards, it will be possible for patent applicants to obtain Unitary Patents from their allowed European patent applications at the EPO. In addition, patent proprietors will have the option to start infringement proceedings at the UPC in respect of any of their granted European patents which are not opted out of the UPC system. These additional choices for European patent applicants and proprietors are clearly good news!

One potential downside of the UPC for patent proprietors is that it also provides a forum for central revocation of European patents. In particular, from 1st June 2023, it will become possible for third parties to start central revocation actions at the UPC against any granted European patents which are not opted out of the UPC system. This option will be available even if the relevant patents are well past the 9-month EPO opposition window. As such, patent proprietors who would prefer to avoid the possibility of central revocation at the UPC should now take steps to opt out their patents from the jurisdiction of the UPC. Applications to opt-out of the UPC system may be filed in advance of the UPC opening date during a so-called “sunrise” period, which will start on 1st March 2023. For more information on opting out, please see https://www.boult.com/bulletins/the-upc-should-i-opt-out-my-patent-or-not/.

For more information on Unitary Patents and the UPC, please see https://www.boult.com/the-unified-patent-court-and-unitary-patents/.

Overview

European patent litigation is currently a very disjointed affair. A European patent application starts its life being centrally examined by the European Patent Office (EPO), but this centralised approach changes after grant when the application becomes a bundle of national patents in a number of chosen validation countries.

Whilst there is a 9-month opposition window for centrally opposing a granted European patent at the EPO, any subsequent litigation currently has to occur in the national courts. This means that if you own a European patent and are keen to stop a potential infringer, your only option at present is to take action separately in the relevant validation countries of interest. Equally, if you are concerned about a competitor’s granted European patent, and you have missed the EPO’s 9-month opposition window, your only current option is to start separate invalidity actions in each of the national courts.

Clearly, this sort of multi-jurisdictional litigation can be an expensive process, and can lead to different results in different jurisdictions.

However, change is coming in the form of the Unified Patent Court (UPC).The UPC is due to open on 1st June 2023 and will provide a single court for litigation of European patents across the majority of European Union (EU) countries. This represents the single largest change to European patent enforcement in decades.

In tandem with the opening of the UPC, European patent applicants will be given an extra option to consider when choosing validation countries for their European patents. Currently, a granted European patent can be validated in particular countries at the applicant’s choice, and thereafter becomes a bundle of separate patents in those countries. However, alongside the UPC will come the new option of obtaining a so-called “European patent with unitary effect”, which is often more simply referred to as a Unitary Patent. A Unitary Patent will be a single patent right covering multiple EU countries, and will fall under the exclusive jurisdiction of the UPC.

Boult Wade Tennant with offices in Germany, Spain and the UK will be able to provide the full range of services relating to Unitary Patents as well as European patents and applications.

Some common questions about the UPC and Unitary Patents are answered below. In addition, more detailed information is available in our three downloadable guides on Registering for unitary effect, Unitary Patents and the UPC, and how the UPC and Unitary patents affect SPCs. Nonetheless, please do not hesitate to contact your usual advisor at Boult Wade Tennant if you need any further information on the UPC or Unitary Patents.

Download our guides to Unitary Patents and the Unified Patent Court

When is the UPC coming?

Following Germany’s planned ratification of the UPC Agreement on 17th February 2023, the UPC is due to open doors on 1st June 2023.

How will the UPC affect my European patents and applications?

By default, your existing European patents will fall under the jurisdiction of the UPC as soon as this new court opens its doors on 1st June. This means that a competitor could start a central revocation action at the UPC against any of your existing European patents, even if they are well past the 9-month EPO opposition window. Whilst such an action would not impact the UK part of your European patent, it could be a very cost-effective way for a competitor to try to revoke your European patent in a lot of EU countries. If you would prefer to avoid the possibility of central revocation of your existing European patents at the UPC, it is possible to actively opt out your patents from the jurisdiction of the UPC.

Regarding any pending or new European patent applications, these will also fall under the jurisdiction of the UPC on grant. Again, it is possible to opt out particular applications from the jurisdiction of the UPC if desired.

You will also have new validation options available on allowance of any European patent applications that are pending when the UPC comes into force on 1st June 2023. It will continue to be possible to elect individual validation countries so as to obtain a bundle of separate patents in those countries (referred to here as a “bundle EP”). However, alongside this, the UPC will provide the new option of obtaining a Unitary Patent, which will cover multiple EU countries and will fall under the exclusive jurisdiction of the UPC. It will also be possible to proceed with a mix of the two approaches, e.g. obtaining a Unitary Patent, as well as validating separately in the UK, Switzerland and Norway. An important point to note is that a Unitary Patent cannot be opted out of the jurisdiction of the UPC.

What is a UPC opt-out?

Opting-out enables a patent owner to actively remove their European patent from the jurisdiction of the UPC so that the European patent instead remains under the jurisdiction of the relevant national courts. It will only be possible to opt out during a transitional period of the UPC, which will last at least 7 years. However, such opt-outs will usually be effective for the whole life of the patent.

Importantly, only bundle EPs can be opted out of the jurisdiction of the UPC. It is not possible to opt out a Unitary Patent from the jurisdiction of the UPC – Unitary Patents fall under the exclusive jurisdiction of the UPC by definition.

An opt-out is effective for all states for which the bundle EP was granted, so it is not possible to opt out only for particular countries in the bundle. However, it is possible for a patent holder to withdraw an opt-out at any time should they wish to do so (unless the European patent has been the subject of national litigation in the meantime). Having withdrawn an opt-out, the bundle EP would then fall within the jurisdiction of the UPC for any subsequent disputes.

Opt-outs will become possible from 1st March, i.e. 3-months prior to the UPC opening its doors. The initial 3-month “sunrise” period is intended to give patent owners time to opt out their patents before competitors are able to start central revocation actions against them at the UPC.

If you are interested in opting out your European patents, please contact your usual advisor at Boult Wade Tennant.

Does the UPC affect EPO oppositions?

It is currently possible to oppose a European patent centrally at the European Patent Office (EPO) so long as the opposition is filed within 9 months of the date of grant of the patent. If successful, an EPO opposition can lead to revocation of the European patent in its entirety (i.e. across all validation countries).

Once the UPC becomes operational on 1st June, it will still be possible to file an EPO opposition if desired. However, for European patents which have not been opted out, the UPC will provide an additional choice of forum for revocation actions. This will be of particular interest in cases where the 9-month EPO opposition window has already passed. However, revocation via the UPC would not affect the European patent in countries outside the coverage of the UPC (e.g. the UK). Furthermore, a revocation action before the UPC is expected to be significantly more expensive than an EPO opposition. Therefore, EPO oppositions will remain immensely valuable tools when looking to invalidate competitor patents.

How do I get a Unitary Patent?

Once the UPC becomes operational on 1st June 2023, Unitary Patents will become available via the European Patent Office (EPO). Specifically, a Unitary Patent will be obtainable by filing a request for unitary effect at the EPO within one month of grant of a European patent. Therefore, this will be an option for European patent applicants to consider alongside their decisions on European patent validation countries. Boult Wade Tennant will be able to file requests for Unitary Patents as part of our comprehensive European services.

The request for unitary effect will not require payment of an official fee at the EPO. However, it will be necessary to file a translation of the European patent. In particular, for English language European patents, a translation into any other official language of the EU will be required. Alternatively, for French or German language European patents, a translation into English will be required. The requirement to submit translations will be reviewed after 6 years, and may be removed depending on the availability of high quality machine translations at that time.

In very limited circumstances, it will not be possible to obtain a Unitary Patent. In particular, a request for unitary effect will be refused when the European patent has not been granted with the same set of claims in all of the countries participating in the Unitary Patent regime. However, such cases are few and far between.

Key dates to note;

• 17th February – German ratification of the UPC
• 1st March 2023 – Start of “sunrise” period during which it is possible to opt-out European patents and applications from the jurisdiction of the UPC
• 1st June 2023 – UPC opening date