UPC-Updates | 13. July 2021

The German Federal Constitution Court clears the way for the UPC

The German Federal Constitutional Court rejected the two pending applications for a temporary injunction directed against the Act on the Agreement of 19 February 2013 on a Unified Patent Court. With this decision, the Federal Constitutional Court has cleared the way for a timely ratification of the UPC Agreement and thus for the entry into force of the Unified Patent Court UPC, probably in 2022.

After more than seven years struggling, the Agreement on a Unified Patent Court had eventually come into force on 18 December 2020 and had been stopped shortly thereafter by the above mentioned two applications for a temporary injunction.

In an order published on July 9, 2021, the Second Senate of the Federal Constitutional Court rejected the two pending applications for a temporary injunction.

The Senate based its decision on the ground that the constitutional complaints are inadmissible on the merits because the complainants have not sufficiently substantiated the possibility of a violation of their fundamental rights, in particular a violation of the principle of the rule of law, nor of a violation of the fundamental right to effective legal protection, nor of a violation of Union law.

As a result, the German Federal President is now free to sign the necessary documents which would allow the UPC to enter into force.  In the German legal community, it is generally believed that the UPC Agreement could start in the second quarter of 2022.
In the Unitary Patent system (UPS), applicants of European patent applications will, after grant of the European patent, have the choice to request and obtain a unitary effect of their patent in those states which have signed and ratified the Agreement. At present, the following 15 States have signed and ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden.

The UK had withdrawn its ratification in connection with Brexit and is not any more a member of the UPS and the UPC; however, this will have no effect with regard to the European patent which can still be designated for the UK as the UK remains a member of the EPC.
Further, Spain, Croatia and Poland have indicated that they will not ratify the UPS and the UPC as well.

Nevertheless, it can be expected that additional EU Member States will ratify the UPC Agreement at a later date.

In view of these new circumstances, we would like to draw attention to the fact that the Unified Patent Court will not only have jurisdiction over future unitary patents, but also over existing European patents. I.e. an existing European patent may be subject to a central invalidity attack before the so-called Unified Patent Court as of the date of entry into force of the new regulation and thus fall at once for all participating EU member states (see above) where the patent has been validated (note: validations of the European patent in non-EU member states remain unaffected). As a countermeasure, the possibility has been created for existing patents to opt out of this system (so-called opt-out), so that only the national patent courts of the member states in which the patent was validated will continue to have jurisdiction.

We therefore recommend that you should now promptly review your existing European patent portfolio to decide which patents you should opt out of the new system. Please do not hesitate to contact us if you have any questions.

Further information on the decision of the Federal Constitutional Court can be found here.

Please contact us for any questions.

Jürgen Feldmeier, LLM
proofread: Dr. Andreas Oser