The long-awaited day has finally come! The Unified Patent Court (UPC) and the European unitary patent are alive since 1st June 2023.
As mentioned in a previous article, the entry into force of the Unified Patent Court will have substantial impacts on patent litigations in Europe and will affect both unitary patents and traditional European patents.
As a reminder, so far, a granted European patent gives its owner an exclusive right to make, use or sell the invention covered by the patent in each country in which this European patent has been validated following an examination and grant proceedings (39 possible countries + 4 validation countries + 1 extension country). In addition, each country has its own national jurisdiction which is competent to deal with litigations (invalidity, infringement, etc.) related to the European patent validated in that country.
In order to limit case law discrepancies among national jurisdictions, and in view of simplifying the European patent system, a single supra-national patent right covering several EU member states has been under discussion for several years.
As of June 1, 2023, the UPC has the exclusive competence for all disputes relating to the unitary patent, as well as for classic European patents granted before or after this date.
However, there are still few particularities concerning this exclusive competence.
A truly unitary patent?
For the time being, the UPC has only been ratified by 17 countries, which means that the unitary patent and decisions relating to this unitary patent can only apply to these 17 countries (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden).
What about other countries?
A dispute relating to a European patent granted and validated in a country that has not ratified the UPC will be assessed by a national court of this country.
Unitary patent vs. conventional European patent: which grant procedure?
To obtain a unitary patent, you still need to file a European patent application before the EPO, which examines the application according to the standard procedure. When the European patent is granted, the patentee has 1 month from the date of grant to request the unitary effect of the European patent. It is therefore only when the European patent is granted that the patentee can choose the unitary patent.
For other countries not eligible to the unitary patent, the standard validation procedure must be followed, as for the system prior to June 1, 2023.
Will the classic European patent and the unitary patent coexist?
Yes, to obtain protection in a country that has not ratified the UPC (e.g. Spain or the UK), the granted European patent must be validated in this country using the standard validation procedure.
The granting procedure of European patent performed by the European Patent Office will thus enable you to obtain a European patent comprising a "unitary" part for countries that have ratified the UPC, and a "classic" part for other countries of the EPC (European Patent Convention) that have not ratified the UPC.
It should be noted that it is however still possible to validate the granted European patent in the countries having joined the UPC. The unitary patent is just a new option at this stage and is not mandatory.
Classic European patent and unitary patent at a glance
I am the owner of a European patent. What are the consequences for me of the new system?
From June 1, 2023, the UPC has exclusive jurisdiction over unitary patents and European classic patents granted before or after this date.
However, there will be a 7-year "transitional period" (which may be renewed once) to opt-out of this exclusive competence of the UPC for classic European patents only. This is known as the Opt-out mechanism. During this period, it is therefore possible, for any owner of a classic European patent, to bring actions directly before national courts, provided that the owner has filed an opt-out request before the UPC.
Please note that it is not possible to opt-out a unitary patent!
What is the Opt-out, and how can I benefit from it?
The opt-out allows the owner of a classic European patent to avoid the exclusive competence of the UPC in litigation matters, and thus to continue to have the validity and infringement of his patent assessed by the national courts of the countries in which the patent was validated.
To benefit from this, the owner of a classic European patent (or patent application) must file an opt-out request before the UPC. Our firm has filed many opt-out requests during a period known to practitioners as the "Sunrise Period". This early opt-out period was introduced 3 months before the UPC came into force, to allow to opt out of the system before the begining of the new sytem
Is it possible to opt-out after June 1, 2023?
The entry into force of the UPC ends the "Sunrise Period", although an opt-out remains possible for a transitional period of 7 years (that may be extended to another 7 years period) from June 1, 2023.
Please note, however, that no action before the UPC must have been engaged to be able to opt-out the exclusive competence of the UPC.
I have requested an Opt-out, can I withdraw it?
It is possible to withdraw an opt-out request (known as an Opt-in request) at any time during the life of a European patent, in order to make the patent subject to the exclusive competence of the UPC.
Please note, however, that if an opt-in request is filed, it will no longer be possible to file a new opt-out request. In other words, the UPC allows to opt-out of the exclusive competence of the system only once.
It should be noted as well that an opt-in request cannot be filed if a litigation is pending before a national court.
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