We answer the most asked questions about the UPC. If you want to know more, get in touch and we’d be happy to help.
When will the UPC system start?
The start date is 1 June 2023, when both the Court will open and unitary patents may be granted by the EPO. However, before the start date, there are three transitional measures.
Two of the transitional measures commenced on 1 January 2023 and assist an applicant for a European patent to obtain a unitary patent on the start date:
- The applicant for a European patent coming to grant shortly before the start date of 1 June 2023 may request that the issue of a decision to grant a European patent is delayed until the start date so they do not miss the opportunity to obtain a unitary patent. They will then have 1 month from the start date to request unitary effect.
- The applicant for a European patent may file an early request for unitary effect, so a unitary patent will be granted immediately on the start date of 1 June 2023. This request may only be made after the applicant has received a “Rule 71(3) EPC-communication” (in which the EPO informs the applicant of the text in which it intends to grant the patent), and the applicant may also need to delay the grant (as above).
The third transitional measure allows the owner of a European patent to register an “opt-out” (see below) in advance during a 3-month “sunrise period” (from 1 March to 31 May). Opt-outs may still be filed on or after the start date of 1 June 2023 but these are at risk of being invalidated by a UPC action filed earlier in time.
Why should I act now to ensure that I’m prepared for the new system?
There are a number of reasons why it is important to prepare for the new regime now:
The new system will affect all existing European patents, these automatically coming under the exclusive jurisdiction of the UPC subject to complex transitional arrangements which allow for “opting out”. You need time to consider the full implications for opting your existing European patents out of the UPC, bearing in mind that if you do wish to take this step, it will best be done before the UPC opens (i.e. during the “sunrise period”) and considerable due diligence may be required – see below.
You need to consider those patents which you license-in where the licence agreement confers the right to bring enforcement actions and discuss with the proprietor potentially opting those patents out.
You need to take the UPC regime into account in drafting new licence and joint venture arrangements.
You need to be aware of the possibility – which will be significant – of being sued in the new court by competitors and/or non-practising entities (to whom the UPC may well be more attractive than national courts in the EU).
Any European patents in the application stage now (except pre-March 2007 ones) which come to grant after the system starts can potentially benefit from unitary effect, and there are budgetary and litigation factors to take into account in deciding upon future patent filing strategies. Before the system starts you may already file early requests for applications to have unitary effect and also request that the issue of a decision to grant a European patent is delayed until the start date (see above).
You may also wish to reassess EPO opposition filing strategies: whilst the UPC does not cover all EPC countries, central UPC revocation actions may be an alternative and/or additional way to attack competitors’ patents.
You may even decide that long term investment decisions (such as where to site R&D and manufacturing facilities) may be influenced by the availability of injunctions having broad geographic effect being granted by any local division of the Court.
If I want to opt my patents out of the system, how would I do this?
As mentioned above, careful thought should be given to whether to opt existing European patents out of the UPC, and indeed any published applications (which can also be opted out). If you decide to do this, it will be possible (and advisable) to do so during the sunrise period (1 March to 31 May) before the Court opens. The filing is to be done on a per patent (not per patentee) basis, but it will be done electronically. There will be no fee. You should note that all proprietors of the patent, including (if different) all those proprietors of all national parts of a European patent in states which have ratified the UPC Agreement must be included in the opt-out. However, the UPC has controversially issued guidance that proprietors of national parts of a European patent in countries that have not ratified or even signed the UPC Agreement will also need to be included in the opt out. Until judicial authority to the contrary is provided best practice would be to include the proprietors of all of the national parts of the European patent. It is not what is on the register (neither EPO nor national registers) which determines who is entitled to opt out, but the “real” proprietor(s). Checking the correct proprietors could involve significant due diligence internally in cases of large patent portfolios. Bristows can provide guidance on the procedure for opting out, as well as advice on the opt-out strategy itself.
What are the factors I should be considering when deciding whether or not to elect for unitary protection for my newly granting patents?
A key consideration for many patentees will be budgetary. A unitary patent will cover all those countries which have ratified the UPC Agreement by the date of grant. This will be at least 17, these being Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. There will be no validation fee for a unitary patent and only one translation will be required. However, there will be renewal (maintenance) fees, and for patentees who usually validate in fewer than four UPC states unitary protection is likely to be more expensive.
Patentees will, of course, also want to consider the litigation regime applying to unitary patents. These are mandatorily litigated in the UPC, and cannot be opted out. This has upsides and downsides. The main upside is obviously the advantage of central enforcement in a single action. A unitary patent also means it will only ever be subject to the UPC regime, whereas European patents not opted out will be subject to dual UPC/national jurisdiction for a transitional period (of at least 7 years) and susceptible to pre-emptive national actions for revocation which may block the ability of the patentee to use the UPC. On the downside, some teething problems are possible with the UPC meaning that enforcement may not be as straightforward as hoped. For some time, there will certainly be a good degree of uncertainty both as to procedure and outcome from the Court’s divisions while a body of case law and practice is developed. Further, the flip-side of central enforcement is central revocation, including by proactive actions begun in the UPC central division, meaning that what would otherwise have been a family of EPs may be revoked in one case.
If I am sued, will it always be in my home state?
No. The rules state that actions can be commenced taking into account where defendants are domiciled and where infringing acts take place. In the case of groups of companies, often many different subsidiaries may be involved in alleged infringing activities, and infringement may be widespread. The first instance organisation of the UPC is complex with multiple local and possibly regional divisions, and there are likely to be over a dozen potential venues in which most actions may be commenced, with the choice lying with the patentee. Hence, you might potentially be sued in almost any division of the UPC, but whichever division is used, its decisions have the same pan-European effect.
If I am sued, will the proceedings be in my language?
Sometimes, but not always. The usual rule is that the case will be heard in a local language of local and regional divisions, and in the case of the central division in the language of the patent. The claimant will have initial control as to which language accepted by the division the proceedings are commenced in (subject potentially to an application from the defendant or the Court itself deciding to the contrary). Most (and possibly all) divisions will offer English as an option, and the use of English is likely to dominate for practical reasons, most notably because every judicial panel in the UPC will include different nationalities and the most likely common language between these judges may well be English.
I am a licensee under a patent. Can I sue in the UPC, or do I have to own the patent?
If your licence allows this, then yes you can sue. This is so even if the licence is non-exclusive. The patentee will then have a choice as to whether to join in the proceedings or not.
I have heard that the UPC allows French-style saisies where a bailiff knocks on the door unannounced demanding samples of products. Is that right?
Yes. It is open to a claimant to conduct a saisie anywhere in the UPC territory and then decide if it wants to sue. Hence you should be aware of this possibility if you have aggressive competitors.
I understand that the UPC will be able to grant preliminary injunctions even without notice. Is that right? Can I do anything to prevent that happening to me?
It is right that the UPC will have wide powers to grant preliminary injunctions. Those applications made without notice should be rare, but you can try to prevent this happening to you by filing a “Protective Letter” with the UPC Registry in Luxembourg (as is currently possible in Germany using a Schutzschrift). This procedure effectively asks the Court to inform you of any applications for injunctions to enable you to make representations to the Court before it grants any relief. Again, this is something to consider before the UPC comes into operation.
Will my ongoing EPO oppositions be affected by the introduction of the UPC?
No. The two jurisdictions are parallel and complementary, and the start of the UPC will have no effect on existing oppositions or ones to be started in the future. However, it is possible to foresee oppositions becoming somewhat less common in the long term as the UPC will eventually be able to revoke patents designating most important territories and is not subject to the 9 month post-grant opposition window at the EPO.
Patent litigation has been at the heart of Bristows’ business for nearly two centuries. We know all about the UPC and have a unique insight into how to frame and implement a global strategy at a local level to achieve the most favourable outcomes for our clients.
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