UPC-Updates | 18. October 2022

All good things are worth waiting for

“All good things are worth waiting for”. Now the time has finally come:
The Unified Patent Court has announced on its website that it plans to commence operations on April 1, 2023.

This means: Actions for invalidity and for infringement of European patents can then be filed with the Unified Patent Court, unless a request to “opt-out” from the Unified Patent Court system has been filed for the European patent in question.

Such an “opt-outrequest can be filed as early as January 1, 2023, i.e. in the sunrise period before April 1, 2023. The “opt-out” request can be filed for granted European patents as well as for pending European patent applications that have already been published.

In addition, for granted European patents where the mention of grant is published on or after April 1, 2023, a request for unitary effect of the European patent for all participating member states that have joined the unitary patent system can be filed within one month of publication.

The participating states – as of October 2022 – are so far the following 17 states:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden

In the foreseeable future, the following additional member states could join as soon as they have completed the pending ratification: Ireland, Poland, Czech Republic, Slovakia, Hungary, Romania, Greece and Cyprus.

For other member states, such as Spain or Croatia, the European patent must still be validated nationally. The same applies, of course, to all non-EU states that belong to the European Patent System (such as Great Britain, Norway, Switzerland, Türkiye, etc.). Instead of the European patent with unitary effect, there will of course also be the possibility in the future for patent protection to extend only to certain desired countries, as in the past, by means of corresponding validation. Depending on whether unitary effect or classical validation is chosen, different translation requirements have to be fulfilled for the granted patent.

For European patent applications for which the intention to grant has already been communicated, i.e. the communication according to R. 71(3) EPC has been issued, the possibility to obtain a European patent with unitary effect can be opened by the following measures:
* An early request for the European patent with unitary effect can be filed. The EPO will deal with the request from April 1, 2023. Or:
* A request is filed in response to the communication under R. 71(3) EPC to defer grant. The EPO then delays the grant so that it is not published until on or after April 1, 2023.
Both measures can be applied as soon as Germany has deposited the certificate of ratification. This date is yet to be announced.

Now is a good time to review the current portfolio of European patents and European patent applications to determine whether an “opt-out” request should be filed for all or some, or whether a European patent with unitary effect is desired for pending applications. This decision will depend on many factors, including the importance of the invention, the technical field, the competitive environment, etc.

Please contact us. We will be happy to advise you on which solution is best for you.

Dr. Dorothea Hofer, Jürgen Feldmeier LLM, Dr. Andreas Oser LLM