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The gestation period of the European Unitary Patent System has been a long one with many delays. However, on 19 January 2022 the Austrian government deposited their instrument of ratification of the Protocol to the Unified Patent Court (UPC) Agreement on provisional application. This act triggered the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organisation.

Background to the UPC

The European Unitary Patent is intended to provide a further and more efficient option for enforcement of patent rights across the European Union. It is based on the European patent system which is overseen by the European Patent Organisation (EPO). Not all EPO countries are members of the EU, however, the Unitary Patent System applies only to EU countries. Once a European patent is granted, the applicant chooses which EPO jurisdictions they can validate the patent in in order to bring it into force in those jurisdictions. The Unitary Patent System provides an option that is of similar cost to validating the patent in four jurisdictions but instead has the “unitary effect” of covering all of the EU states participating in the UPC system. In this way it is intended that patentees can protect their inventions more broadly geographically and at less cost than previously. Furthermore, the unitary patent is overseen by the UPC which will have exclusive jurisdiction over European patents that have been selected to have unitary effect, as well as “non-unitary” European patents that are not opted-out of the jurisdiction of the UPC.

When Will the UPC Actually Begin?

However, the Unified Patent Court organisation will not spring into being immediately, but the last part of establishing the UPC can now be carried out. The PAP will last at least eight months, but this does mean that the UPC system could begin hearing cases in August 2022. As matters stand it is likely to be slightly later than this, but it appears that the UPC might be ready to consider cases by Autumn 2022.

There is one final step, however. Owing to the provisions of the Unified agreement, Germany must still deposit its instrument of ratification and it is this act that will be the final trigger for the UPC to start functioning as a court system 3–4 months later (specifically on the first day of the fourth month after the month in which Germany deposits its ratification document). As a practical matter, Germany will not do this until the preparations for the UPC system are truly complete. However, Austria’s deposit marks the moment at which enough participating states are committed to the UPC system to guarantee that it will commence once Germany takes that final step.

The birth of the Unitary Patent System does not mean that national patent rights or the existing “traditional” European patent system has been rescinded. Patents are still available via these routes.

Furthermore, there will be a “sunrise period” before the UPC begins operations during which existing European patents may be opted out of the UPC system. There may be good commercial reasons why a patentee may wish to do this and thus rely on national routes for enforcing their intellectual property rights.

The Organising Committee of the UPC have yet to set the sunrise period for opting out of the UPC and we expect to report on that when news emerges.

However, the EPO have already announced measures to support users in an early uptake of the Unitary Patent. These measures are intended to allow a greater number of patents to be part of the new system and are, briefly:

  1. to offer the option to apply for delay of grant of a European patent until the unitary Patent system has come into effect; and
  2. to allow applicants to file an “early request for unitary effect” for allowed patent applications before the UPC is fully functioning. The EPO will start to accept such requests only once Germany has deposited its instrument of ratification.

We also note that there will be a transition period of seven years during which the existing and new UPC systems will run in parallel before the UPC becomes the exclusive court for all decisions involving European Patents that have not specifically opted out of the UPC system.

Naturally, our preparations are underway here at Schlich for entry into force of the UPC. We will be representatives before the new Unified Patent Court and also continue to represent clients before the EPO and the UK courts.

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