As previously reported, following ratification in Germany, the way is cleared for the European patent with unitary effect (EU unitary patent) and the Unified Patent Court (UPC). As a result of the deposit of the instrument of ratification by Austria on 18 January 2022, the “provisional application of the EPC/UPC” has now entered into force. Only the preparatory work for the establishment of the court system will have to be completed in the coming months. The Preparatory Committee estimates that it will take at least 8 months. Once the UPC has become effective, Germany will deposit its instrument of ratification as the last formal act, which will automatically trigger the starting point: at the beginning of the fourth following month, i.e. probably towards the end of 2022 or the beginning of 2023, the unitary patent and the UPC will finally become reality, after a long waiting period.
What does this mean for patent applicants and patent proprietors of European patents?
The following are some points to consider now, i.e. even before entering into force:
(1) Choice between the new unitary patent and the classical EP patent
Even if the option can in principle only be exercised after entry into force: by means of suitable procedural measures, this freedom of choice could still be used for EP applications currently pending before the EPO, even if the grant phase is already relatively far advanced.
In a recent communication from the European Patent Office, official measures are announced – without giving details at the moment – to give patent applications that are about to be granted the chance to obtain a unitary patent. The communication on the version of the patent application intended for grant (the so-called “Rule 71(3) Communication”) is considered to be the caesura for the applicability of these announced measures.
If you wish to maintain the option for applications although a Rule 71(3) Communication has already been issued, you may have to take your own procedural steps. That is, in order to gain time in this situation, for instance minor formal amendments to the intended text could be requested at the end of the regular 4-month period, in order to trigger a second 71(3) Communication. Alternatively, or in addition, it is also possible to continue the application after the due date for completion of the (possibly second) Rule 71(3) Communication has deliberately expired: after being notified of a loss of rights, further processing (with an official fee of 265.00 EUR) would then have to be requested.
(2) Choice depending on the type and number of countries desired
After entry into force of the Unitary Patent Act, the applicant must decide, at the latest one month after receipt of the decision to grant by the EPO, whether to proceed with EP validations in individual countries as before or to seek the new EU unitary patent. The new EU unitary patent would allow patent protection over the entire territory of the participating EU countries at one stroke, which currently includes the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. More will be added soon, as 8 countries only need to ratify (Czech Republic, Greece, Ireland, Poland, Romania, Slovakia, Hungary, Cyprus). If protection is to be achieved for further, non-participating countries – including non-EU states of the EPC such as Great Britain or Switzerland – additional national validations would have to be carried out there in accordance with the “old” model.
(3) Choice of (non-)applicability of the UPC (opt-in/opt-out)
Three months before the unitary patent and the UPC enter into force, the so-called “sunrise period” begins. From this time onwards, the applicant/patent proprietor can request the non-applicability of the UPC system for one or more or even all of his existing and future classical EP patents by “opting out”. In the opt-out state, individual national courts will then – during a transitional period of 7 years – retain jurisdiction as before in actions on patent infringement and validity in the respective country. Reasons for choosing the opt-out are, for example, not to expose the patent to the risk of a central invalidation through a single nullity procedure; furthermore, in the opt-out state, the development and the practice and case law in the new UPC system could first be observed; if sufficient legal certainty is given, the patent proprietor can then enable UPC applicability again in the future as a result of an opt-in declaration.
(4) Choice of a competent UPC court location for patent infringements
Due to their experience, the German court locations Düsseldorf, Munich, Mannheim and Hamburg will also play an important role in the new UPC system. The court location Germany could be further strengthened by the fact that the central UPC court in Munich is not only responsible for the field of mechanics, as originally stipulated, but may also awarded the technical fields of chemistry, pharmaceuticals and human necessities (incl. health care); this field was originally intended for London, but is now available for disposition as a result of Brexit.
If there is no opt-out, the decisions of the UPC court will be directly effective in all countries where the EP patent exists.
If you have any questions, please do not hesitate to contact our team. Dr Andreas Oser, LL.M. (office@pruefer.eu)
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
