Germany has recently moved forward on steps to bring the “Agreement on a Unified Patent Court” (UPC Agreement) into force, and the Unified Patent Court Preparatory Committee has laid out an ambitious time plan for the UPC, commenting that “it is estimated that the UPC will start operations around mid-2022.”
But, what does this mean for users of the European patent system? Read on for the latest news, what it means, and a refresher on the proposed Unitary Patent and Unified Patent Court.
Quick background, the latest news, and next steps
The UPCA was signed as an intergovernmental treaty in February 2013 by 25 EU Member States. You can read the text of the agreement here. The UK was one of the initial signatories but is now no longer a member of the Preparatory Committee. Before the UPCA can enter into force, it must be ratified by 13 Member States, including the three Member States in which the highest number of European patents were in effect in 2012: France, Germany, and (after Brexit) Italy.
Several complaints have significantly delayed German ratification, including a constitutional complaint centred around the type of majority needed to approve the UPC agreement. Having now obtained the requisite 2/3 majority and having waved two applications for a preliminary injunction against the later German ratification of the UPC Agreement, Germany formally ratified the agreement on 7 August 2021.
The UPC agreement specifically allocates certain responsibilities to the UK, and in particular that the UPC’s Court of First Instance will have a Central Division in London focusing on chemical and life science disputes. This has delayed the UPC considerably in the past, and it remains unclear how these responsibilities will be re-allocated in view of the UK’s decision to leave the system. However, Germany’s recent decision to ratify the UPC agreement shows political willingness to move the UPC forward despite this uncertainty.
The next step will be for a number of member states to ratify the “PAP-Protocol”, which sets out a protocol for a provisional application phase before the Court opens. If approved, it is expected that this phase will last 6-8 months, in which time judicial appointments will be confirmed and the sunrise-period will begin for those patent holders who wish to opt-out their European patents from the Court’s jurisdiction before the Court becomes operational.
When could the Unified Patent Court open its doors?
The latest time plan from the UPC Preparatory Committee estimates that the necessary ratifications of the PAP-protocol will be achieved by August of this year, that “approximately eight months will be required to conclude all the work that needs to be done during the PAP”, and that the UPC will start operations around mid-2022.
Some commentators suggest this timeline may be optimistic given the uncertainty surrounding the question of what to do about the UK’s lack of involvement in the UPC, but it nevertheless seems sensible for patent holders and users of the European patent system to take the opportunity to re-acquaint themselves with the proposed Unitary Patent and Unified Patent Court.
What does the UPC mean for users of the European patent system?
Users and patent holders should begin to re-acquaint themselves with the various issues which will present themselves if the UPC does go ahead, for example, whether licenses and contracts should be updated, whether they want their existing European patents to be opted out from the UPC’s jurisdiction, and what the budgetary and commercial implications would be to begin requesting that their granted European Patents take “unitary effect”. For example, on this latter point, applicants who typically validate in many countries are likely to see a decrease in fees by taking the UP route. However, doing so clearly requires placing a certain degree of confidence in the UPC.
Refresher: Unitary Patents
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The idea is that patent proprietors will be able to request unitary effect of their European patents so as to obtain unitary patent protection in the participating member states in Europe. The resulting Patents with unitary effect may also be called “Unitary Patents”.
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This is in contrast with the current system, in which a granted European patent takes effect only in those jurisdictions in which the applicant validates the patent. The result is a bundle of different national rights.
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The proposed new Unitary Patent would dovetail with the existing centralised patent granting procedure overseen by the EPO. Upon receiving notice from the EPO that an application is allowable, the applicant would have various options, including to validate the patent in its jurisdictions of choice (using the current system); requesting that the patent take “unitary effect” and be granted in every participating member state; and to request unitary effect while also validating in non-participating member states such as Spain, Croatia, and the UK.
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Currently, European Patents typically represent a bundle of national rights; for example, separate national validations in the UK, Germany, France, and the Netherlands. As a general rule, each of these separate rights can be bought, owned, and licensed separately, and separate renewal fees are payable to the various national offices.
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In contrast, the proposed Unitary Patent would represent a single object of property, requiring a single renewal fee and a single owner.
Refresher: The Unified Patent Court
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The idea is that patent proprietors will be able to request unitary effect of their European patents so as to obtain unitary patent protection in the participating member states in Europe. The resulting patents with unitary effect may also be called “Unitary Patents”.
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The UPC will not have competence over national patents granted by a national patent office.
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The aims of the UPC include to end costly parallel litigation in multiple European jurisdictions, and to improve legal certainty by harmonising case law in the areas of patent infringement and validity.
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The UPC will comprise a Court of First Instance, a Court of Appeal, and a Registry. The Court of First Instance will be composed of local divisions for a few states, at least one regional division and a Central Division that will have a seat in Paris for electronics subject matter and also a section in Munich focusing on mechanical engineering. The UPC Agreement also currently requires a section in London with a focus on chemistry and life sciences. It remains to be seen where this latter section will be re-homed given the UK’s withdrawal from the system.
Here to help
It is wise to begin preparing for the UPC as soon as possible. Contact Tom Hamer or your usual Kilburn & Strode advisor if you would like to discuss the various issues and their relevance to your patent portfolio and commercial aims.