How will my European patent be affected by the Unified Patent Court (UPC)?
Existing European patents will automatically fall under the jurisdiction of the UPC. Therefore, as default, the UPC will have jurisdiction over national patents derived from European patents by validation in countries affected by the legislative changes unless those patents have been opted out.
During a transitional period (at least 7 years), national courts will also have jurisdiction over those patents.
Therefore, during the transitional period, litigation of a validated European patent in countries affected by the legislative changes could be commenced either at the UPC or on a national basis, unless a patent has been opted out from the UPC. The court is determined by the party commencing litigation, be that the patentee or the challenger.
After the transitional period, litigation of a validated European patent in countries affected by the legislative changes will only be possible at the UPC (not on a national basis) unless the patent has been opted out.
Find out more about the UPC here.
Find out more about which countries fall under the jurisdiction of the UPC here.
Find out more about opting out here.
What is the Unified Patent Court (UPC)?
The Unified Patent Court is a new international court for patent litigation. Find out more here.
The UPC will have jurisdiction over several European Union (EU) countries, such as France and Germany, but will not have jurisdiction over all European Patent Convention (EPC) member states. For example, the UK, Switzerland and Spain will not fall under the jurisdiction of the UPC. Find out more here.
My patent has granted. Can I change it into a unitary patent?
No.
What are the advantages and disadvantages of using the Unified Patent Court?
A key advantage of using the UPC is central enforcement. However, this advantage needs to be weighed up against the risk of central revocation.
Parallel national litigation in multiple jurisdictions, which could result in conflicting decisions, might be avoided by using a single litigation at the UPC. Avoidance of parallel national litigations also presents the potential for cost saving. However, the cost of litigation in each country varies, so the cost comparison will depend on which country (or countries) are of commercial interest.
Litigation at the UPC is intended to be rapid. This could be an advantage if reaching fast resolution is a priority. Alternatively, this could be viewed as a disadvantage due to the associated demanding deadlines.
The UPC is a new, untested court and, consequently, there is no established body of case law on which to rely for guidance on the likely stance the court may take on various points of law. One of the main concerns relating to the UPC, at least for a while, is essentially fear of the unknown. However, parties involved in litigation at the UPC have the opportunity to participate in shaping the case law for this new court.
Should I opt out of the Unified Patent Court (UPC)?
Whether or not to opt out is a decision to be made on a case-by-case basis, bearing in mind the advantages and disadvantages outlined above.
Find out more about the UPC here.
Find out more about which countries fall under the jurisdiction of the UPC here.
Find out more about opting out here.
Advice and issues to consider (granted European patents)
We would advise our Australian and New Zealand clients holding granted European patents to prepare for the arrival of the UPC now.
Evaluate the strength of your patent. For instance, are you aware of prior art in another jurisdiction which could be used by a third party in a potential central revocation action?
Also evaluate the importance of each patent and identify key patents in your portfolio. One possible approach would be to opt out your key patents only, allowing less important patents to automatically fall under the jurisdiction of the UPC. Another consideration is whether to keep only patents with a strong presumption of validity under the jurisdiction of the UPC whilst opting out others.
Weigh up the advantage of central enforcement at the UPC against the risk of central revocation.
We recommend weighing up relevant commercial factors in Europe; for example, are profits skewed in favour of one or two jurisdictions, or are they spread across Europe? Where are the competitors active and do they have a home base in Europe?
The UPC is an untested court. Would you prefer to take a “wait and see” approach and opt out of the UPC so that you can observe how UPC case law evolves and possibly opt back in later? Or do you prefer not to opt out, affording the opportunity to participate in shaping case law at the UPC in the event of litigation?
Litigation at the UPC is intended to be rapid. This could helpful if reaching fast resolution is a priority. Alternatively, this could be problematic if the associated demanding deadlines would be difficult to meet.
Review the ownership of your patent. A request to opt out must originate from the entitled proprietor in order to avoid an invalid opt out. In some circumstances, the registered proprietor may not be the same as the entitled proprietor. Co-owners must opt-out together so consent may need to be sought.
Also check any licence agreements and obtain approval from licensees if necessary.
Consider now whether or not you want to opt out your European patent from the UPC. Since opt out is on a case-by-case basis you can choose to opt out all, some, or none of your cases.
If you decide you want to opt out, we strongly recommend opting out your patent during the sunrise period (which begins on 1 March 2023 and ends on 31 May 2023). This avoids the risk of a third-party taking action against your patent as soon as the UPC Agreement comes into force, after which opting out would not be possible due to the pending court action.
Want to know more?
Register for our webinar
Join Senior Associate, Dr. Serena White as she outlines throughout the webinar:
- What the law changes are and what they mean for Australian and New Zealand businesses and individuals with European patents and patent applications;
- The advantages and disadvantages;
- The benefits and risks; and
- What Australian and New Zealand businesses and individuals need to do to prepare.
Discover more about the unitary patent and UPC here.
We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC. We would be happy to discuss what these changes mean for you and assist you with managing your IP portfolio in view of the changes.
Disclaimer
This article is intended to provide general advice. Deciding if unitary patent protection is the right choice and whether or not to opt out a European patent or patent application from the UPC are commercial decisions which will depend on the specific circumstances.