The Administrative Committee of the Unified Patent Court (UPC) has provided a further public statement on its website on 14 July 2022 about the progress on setting up the new court. It is clear that the practical stages of setting up the court, its judges, employees and the IT systems are well underway.
The announcement is important as it indicates that the likely start date for work at the UPC and the commencement of the new Unitary Patent system will be “early in 2023”. There is still no definite news on the commencement of the 3-month “sunrise” period that will exist prior to the commencement date. However, this news does mean that proprietors of European patents likely to be affected by the opt-out procedures of the UPC should be taking active steps to decide on a strategy.
Can you opt-out of the UPC?
The opt-out procedure to exclude existing national validations of granted patents and associated Supplementary Protection Certificates (SPCs) from the jurisdiction of the UPC can be undertaken during the 3-month “sunrise period”. If no action is taken then the relevant granted European patents and/or SPCs will be within the jurisdiction of the UPC when the court starts work, i.e. the rights could be subject to an action for central revocation by a party at the UPC from day 1 of the new court’s operation. An opt-out can still be filed subsequently provided that no action is pending before the UPC.
When will the UPC system come into place?
It is perhaps a little dangerous to predict exactly when the UPC will be starting its work given past delays, but the public statement from the Administrative Committee about the likely commencement date in early 2023 should be taken at face value and rightsholders should be ready to see the new system in place in the first quarter of 2023, i.e. we should expect to see developments for the period 1 January 2023 to 31 March 2023. There may be further announcements by the Administrative Committee through the final months of 2022 to provide additional guidance.
Considerations before opting-out
There are practical consequences to filing opt-out requests at the UPC as advised in our earlier briefings in terms of the logistics of filing the requests and the statements that need to be made about the identity of the proprietor and the need to check permissions with co-owners required under the relevant Rules of the UPC (as well as the caution about discussing this with any licensees also). The opt-out requests are filed at the UPC directly via a new online system on an individual per case basis or as a bulk request for a batch of cases using a software interface. We are encouraging clients to make their intentions known as soon as possible and/or to discuss any questions ahead of any likely deadlines.
The key deadlines to watch for are the commencement date of the “sunrise” period and the expiry date of the “sunrise” period (the 3-month “sunrise” period expires the day before the UPC starts work). We will, of course, send further alerts as the precise details and relevant dates become known.
If you have any questions about the UPC, please contact your regular advisor at Kilburn & Strode, or contact us here.
Kilburn & Strode LLP has a skilled team of European Patent Attorneys who have extensive experience handling EPO opposition and appeal work and are well-versed in dealing with complex EPO opposition cases where there may also be corresponding litigation proceedings. We are therefore well-placed to support and advise our clients on how to navigate the procedures at the UPC and the inter-relationship with the EPO opposition process.