Unified Patent Court: a joy of spring?

On July 14, the Unified Patent Court (UPC) announced on its now “official” website that it plans to begin operations in early 2023. At the Euroforum Unitary Package Conference, which s is held on the same day, this has been further clarified for a start of operations scheduled for March 1, 2023. What impact could this spring event have on your IP strategy?

New developments

Although a sufficient number of Participating States have already ratified the UPC Agreement, it will only enter into force approximately four months after Germany deposits its instrument of ratification. Germany is obliged to delay this filing in order to allow enough time for the Administrative Committee of the UPC to prepare the adequate operationality for the courts. As soon as this last instrument is filed, a Sunrise period of three to four months will begin.

This expectation has allowed substantial progress for the organization of the UPC. On July 8, its administrative committee confirmed the creation of local or regional divisions in Austria (Vienna), Belgium (Brussels), Denmark (Copenhagen), Finland (Helsinki), France (Paris), Germany (Düsseldorf , Hamburg, Mannheim, Munich), Italy (Milan), the Netherlands (The Hague), Slovenia (Ljubljana) and Portugal (Lisbon). The Nordic-Baltic regional division will be mainly located in Sweden (Stockholm). Ljubljana and Lisbon will host headquarters for the UPC’s Patent Mediation and Arbitration Center. Central divisions have already been confirmed for Paris and Munich, while Milan are currently set to replace London as the third venue.

What has also been adjusted is the Court’s rules of procedure and its scale of fees. Both will enter into force on September 1, 2022. Further steps have been taken to organize the recruitment of staff and officials of the Court, and a list of candidates for the appointment of judges of the UPC has been presented. These technical and judicial magistrates are now at the stage of receiving and accepting their job offers, which include a monthly salary starting at €18,089 for a trial judge. A total of 90 judges are expected to be appointed, mostly part-time and representing 16 FTEs for the first year. Salaries are set to be comparable to those of the EPO Boards of Appeal to ensure applicants of the highest standards. This places them significantly above most nationally appointed judges.

Overall, the organization behind the scenes is progressing rapidly and the Sunrise period preceding the entry into force of the UPC could start as early as December 1, 2022.

Quick summary of the unitary patent system

Current system: currently, under the European Patent Convention (EPC), a granted European patent must be validated in each Member State. In concrete terms, this involves costs for each jurisdiction chosen – and these costs change with the number of Member States selected. Because each resulting patent is a national patent, its fate is independent. This means that for each jurisdiction, the local patent may remain in force or be invalidated.

Unitary patent system: with a unitary patent (UP), all participating states are instead covered by a single patent (national validations can then still be used to separately cover all non-participating states). The centralized procedure can represent a cost saving when wide coverage is sought. This also means that the fate of the patent will now be the same in all participating states: it is in fact a single, unitary patent. As a benefit, an injunction won at the UPC can be enforced in all participating states, thereby avoiding the need to seek an injunction in each individual jurisdiction. This mirror has two sides, as a successful revocation action could similarly lead to a loss of patent protection in several countries.

How to prepare

It is important to determine a strategy for your intellectual property. If you make no choice, your existing patents will be incorporated into the new Unified Patent Court. While this may be your intention, it may also not be to your benefit – and when a third party files an action against one of your patents with UPC, it means that the choice of jurisdiction has been made. for you by your competitor. Similarly, a domestic action initiated by a third party could bind your case to a domestic court.

Such scenarios can be avoided with advance planning. From the start of the Sunrise period, it will be possible to register your intention to withdraw from the system for your existing granted EP patents. We will contact you shortly about this.

In addition, two transitional measures become available for your requests: one consists of filing an early request for unitary effect, the other is a request to defer the grant of your European patent. These measures can help smooth an IP portfolio in the UP system.

As always, the decision whether or not to participate in the new system, and the extent to which you do, depends on several considerations. Your advisers at NLO closely follow the developments of the unitary patent. To get the best advice for your situation, we recommend that you discuss your strategic options with your contact person at NLO.