Following the announcement of a two-month delay, the new unitary patent system is now set to launch on 1 June 2023. This is the day the Unified Patent Court (UPC) will begin accepting cases, and owners of European patents granted by the European Patent Office (EPO) on or after that date will be able to obtain a unitary patent (UP), provided this is requested within one month of the date of grant.
The existing system of European patents being “validated” in any of the 39 countries of the European Patent Convention will remain in place, but an additional option of a unitary patent covering 17 countries within the European Union will also become available (as an alternative to doing national validations in those countries).
Opt-outs
The Unified Patent Court will handle all litigation involving unitary patents. For European patents validated in the traditional national way within any of the 17 countries covered by the new UP system, the default situation for next 7-14 years is that litigation involving those validations can be handled centrally by the UPC or individually by national courts in the respective countries. This means third parties will be able to file a central revocation attack at the UPC. If successful, this would cause all the validations within the UP area to be revoked.
Patent owners can avoid this risk of a central revocation action by “opting-out” any of their European patents. While a patent is opted-out, litigation involving that patent can only take place in the national courts.
Opt-outs can be filed from 1 March 2023. If you want to opt-out any of your patents, we recommend completing this before the UP system launches to ensure your patents are protected.
For more information on opt-outs, see this article.
Delay of grant date
If you have a European patent that is expected to grant soon, and you would like to obtain a unitary patent, you might need to take steps to ensure the patent does not grant before 1 June 2023 (in which case a UP would not be available). From 1 January 2023, this is achievable by filing a “request for delay” at the EPO, provided that a notice of allowance (communication under Rule 71(3) EPC) has issued on the application. Additionally, the “request for delay” must be filed no later than the date on which the applicant approves the text for grant (by responding to the notice of allowance).
Review
We recommend all owners of European patents/applications to review their portfolio and decide if any opt-outs and/or requests for delay are needed, and to take action as soon as possible. Please let us know if you would like us to assist with this review process. We are also able to file opt-outs and requests for delay.
For more information, please contact Jeremy Smith or your regular Kilburn & Strode advisor.