The Unitary Patent and Unified Patent Court are now expected to go live early in 2023; if you own European patents, and even if you don’t but are interested in European markets, now is the time to start considering a few important issues.

Check out the five points we advise you to consider before the UP and UPC go live.

The Unitary Patent (UP) and Unified Patent Court (UPC) are in the last stages of preparation. The groundwork leading to kick-off is well under way, with the UPC Administrative Committee expected to finalise the appointment of UPC judges before the summer break. Both the UP and UPC are now expected to go live early in 2023.

As from the starting date of the UPC, European patents, pending applications and related supplementary protection certificates will fall within the exclusive jurisdiction of the new court, for actions concerning both validity and enforcement – unless the right holder files a request to opt out of the UPC’s jurisdiction.

Starting from a 3-month period before the UPC goes live (therefore foreseeably in fall 2022) it will be possible to file an application to refuse its exclusive jurisdiction in favour of that of national courts – in order to avoid, for instance, the risk of a possible centralised revocation of a patent validated in UPC member states.

Although the decision on whether or not to opt out of the UPC’s jurisdiction is the most urgent in connection with the new UPC-UP system coming into operation, it is by no means the only important one.

We have therefore listed below five points that you should consider now if you own a European patent or a European patent application – the fifth one is of interest even if you don’t own any European Patents, but your competitors do.

1. Granted European Patents: to opt out or not?

Consider, for all granted European Patents, whether you wish to refer to single national courts in any dispute or whether you prefer to act before the UPC, taking the risk of a centralised unfavourable decision applicable immediately in all UPC member states.

The factors in the assessment can be many, including the total geographic coverage of the patent, the likelihood of active and passive litigation with your competitors and how critical the technology protected by the patent is for your marketing needs.

2. Pending patent applications: Unitary Patent or not?

Consider whether you wish to request the transformation into UPs of any European Patents that are close to grant.

If you do, for European Patent applications that are expected to be granted soon consider the possibility of enacting strategies to put off the grant, including the filing with the EPO of a request to delay the grant (this can be filed during the 3 months before the entry into force of the UP).

The reasons to decide in favour of the UP can be one or more of the following:

• • you believe your patent is strong, and thus unlikely to be revoked by a possible decision in a nullity action or in an action based on reasons which could make the patent unenforceable;
  • you wish to save on maintenance fees, validation costs and so forth by obtaining a single right covering UP member states.

3. Existing and future Licensing Agreements

The UPC Agreement enshrines certain rights for licensees, so review existing and future licensing agreements to check the rights conferred upon the (exclusive/non exclusive) licensee under UPC rules.

4. Patent application filing strategies

Review strategies in terms of the filing of national and divisional applications, in the light of the new institutes.

5. Third party patents: a chance to block them through the Unified Patent Court

Whether or not you are a European patent right holder, identify any competitors’ European patents that you could attack (unless they have been “opted out” of the UPC) on the first day of entry into force of the UPC-UP system, for the purpose of blocking them through a centralised procedure that will have effect in the countries listed above.

Any questions?

There are pros and cons in the UP and the UPC, so any decisions must be considered with care.

Please reach out to us for advice on how to seize opportunities and avoid risks in connection with the new European patent system, our UPC team will be happy to help.

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Read more about the UP and UPC