The detailed article is published at JUVE Patent.
Since the introduction of the Unified Patent Court (UPC) in June 2023, a new system for central attacking the validity of and thereby to nullify a European Patent has been introduced. If a European patent of concern is an EU Unitary Patent, or if a classically validated European patent was not opted out from the competence of the UPC, a central revocation action under the UPC now exists in parallel to an opposition before the European Patent Office (EPO). Therefore, the question arises: what are the pros and cons of challenging the validity either before the EPO or before the UPC? The present report provides some guidance and discusses the main advantages and disadvantages of each system – which eventually is a matter of strategic considerations whether and which advantage may prevail – be it costs, timing, speed of proceedings, and possibly other issues.
We are delighted to announce that our managing partner Dr. Dorothea Hofer has obtained the European Patent Litigation Certificate issued by the University of Maastricht in cooperation with the Academy of European Law (ERA) in Trier. This includes an extensive practical and theoretical training in the law underlying the Unified Patent Court (#UPC) and related fields of European law so that she is well prepared for representing clients in all proceedings before the Unified Patent Court.
Years of planning finally become reality: The official starting signal has now been given! Germany ratified the Agreement on a Unified Patent Court (UPC) on February 17, 2023.
This means that the final requirements for the entry into force of the Agreement and thus for the start of the Unified Patent Court on June 1, 2023 have been met. As previously reported, the testing phase for the Unified Patent Court’s file management and communication software is already underway, and from March 1, 2023 the sunrise period for filing any opt-out requests will begin.
For more information, please visit: https://www.bmj.de/SharedDocs/Pressemitteilungen/DE/2023/0217_Einheitliches_Patentgericht.html
According to the current schedule, the Unified Patent Court will start its work on June 1, 2023.
The so-called sunrise period, during which opt-out requests can be filed with the Unified Patent Court for granted European patents or published European patent applications will start on March 1, 2023, according to the current planning of the Unified Patent Court.
An opt-out request is only effective if it is entered in the register of the Unified Patent Court.
At present, it is not yet known how long it will take from filing the opt-out request to registration, as there are no empirical values yet. In a test phase for the file management and communication software of the Unified Patent Court, which will start on February 13, 2023, we will be able to test the process of filing the request, but this does not allow us to draw any firm conclusions on the subsequent processing time of opt-out requests at the Unified Patent Court.
We therefore recommend filing any opt-out requests as early as possible starting from March 1, 2023.
Now is the time to review again your patent portfolio of European patents and published European patent applications and to decide for which patents/patent applications an opt-out request should be filed early.
Do you have any further questions on this topic or on the Unified Patent Court and the Patent with Unitary Effect?
Please do not hesitate to contact us, we will be happy to advise you!
Dr. Dorothea Hofer
European and German Patent, Trademark and Design Attorney
The start of the Sunrise Period is postponed for two months. The initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period with an entry into force of the UPCA on 1 April 2023. Although the general preparatory work of the UPC is on track, the decision was made that additional time may be given to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents.
According to a statement by Klaus Grabinski, judge at the German Federal Court of Justice and the first president of the UPC, preparations for the new court are all on schedule, with judges already appointed, recruitment of court staff underway, and office space selected, so that the court administration should be operational by the beginning of 2023. The postponement was rather justified by the fact that the authentication requirements for the use of the online portal of the UPC presuppose that users will have to obtain suitable tools through appropriate providers, which may well take more time than expected. However, a further delay of the launch is not expected. We will keep you updated.
If you have any questions, please do not hesitate to contact our team. Jürgen Feldmeier, LL.M. (email@example.com)
“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-out” request 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
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. (firstname.lastname@example.org)
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