The Unified Patent Court Agreement Explained – Pt2

Contents:

• What is the Unified Patent Court?
• What is the Sunrise Period?
• How will Opt-out work?

What is the Unified Patent Court?

The Unified Patent Court (UPC) will have exclusive jurisdiction for Unitary Patents and a Unitary Patent cannot be opted out of its jurisdiction. The UPC will also have jurisdiction over conventional European patents validated in UPC participating countries, but there is a 7 year transitional period (which may be extended by a further 7 years), where a conventional European patent which has a filing date of 1^st March 2007 or later may be litigated before a national court or the UPC unless the patentee proactively “opts out” of the UPC. European patents with a filing date earlier than 1^st March 2007 are unaffected by the UPC.

For key patents or patent applications, it is worth considering opting out sooner rather than later because if a revocation action is filed at the UPC before the patentee opts out, then the UPC has jurisdiction. After the transitional period, conventional European patents which have not been opted out will also fall under the exclusive jurisdiction of the UPC.

Infringement actions at the UPC will be enforceable in multiple countries, meaning there will be one decision, whereas actions in the national courts can result in different decisions.  This should mean that the process is less expensive too.  However, it should be noted that a revocation of a patent in the UPC would apply in all participating countries, meaning losing rights in all of those countries.

The UPC will have greater powers against alleged infringers and decisions should also be made more speedily (it is expected 12-15 months).  The UPC can also award costs against the losing party.

The UPC will consist of 3 experienced and specialist intellectual property judges.

What is the Sunrise Period?

This is the period between the German deposit of Unified Patent Court Agreement (UPCA) ratification and the UPCA coming into force is known as the “sunrise period”. This will last for 3 months. This is the period in which critical business decisions will need to be made about whether to use the UPS, stay with the conventional validations system currently in place or adopt a hybrid of the two. In addition, it will be necessary to decide whether to “opt out” of the jurisdiction of the UPC because of the risk of central revocation.

European patent proprietors will have 2 options:

• Allow their European patent to fall under the UPC jurisdiction; or
• Opt out and follow the existing system

How will Opt-out work?

Opt out will only be possible for the first 7 years from when the UPC comes into effect (this may be extended).

Opt out will last for the lifetime of the patent unless it is withdrawn. Withdrawal of an opt out can be done at any time but it will not be possible to opt out for a second time.

During the sunrise period, patent holders can request their European patent is opted out.

There are no official fees for opting out.

Opting out is not possible if action has already been brought under the Unitary Patent Court.

Disclaimer: This article is intended to explain new knowledge to our readers and to be used only as a brief guide. The information at the time of writing has been summarised by our Professional team based on information available to them and the EPO. To receive IP Advice for specific actions on existing Patents or new before considering whether or not to opt out of UPC please get in touch with our legal team. Every patent will have different parameters to consider and it is prudent to get legal advice moving forwards to ensure the right level of protection remains in place.