The current go-live date for the Unitary Patent (UP) and the Unified Patent Court (UPC) is 1 June 2023. For this date to hold Germany must complete the ratification process during February 2023.
What effect will the UPC have on my European patent?
The UPC will allow granted European patents to be enforced or challenged centrally and for a single ruling to be given that applies across multiple EU countries. The UPC will become available as an alternative forum to national courts for matters relating to European patent rights in the participating EU countries, and once proceedings have been started before the UPC the patent is “locked in” to that forum.
What should I now be considering?
If owners do not wish their patents to be centrally vulnerable under the UPC they need to take action to opt out before the system goes live.
If owners may be interested in making use of the UP they need to consider requesting a delay of grant of their application so that it is still pending at the go-live date.
Opting out
It is important to note that not opting out of the UPC does not have any impact on the immediate status of your patent. Not opting out simply means that any court action involving the patent can take place before the UPC for those states covered by the UPC and will still take place before national courts for any other states covered by the patent.
Having validated a European patent only in states not covered by the UPC does not mean the UPC will have no jurisdiction over the patent. The states to be considered in relation to whether the UPC has jurisdiction are all of those covered by the patent at grant and these will generally include at least France and Germany. For example, if a patent was validated in the UK and Norway, but covered France at grant, then the UPC would have jurisdiction over the French part of the patent but not the UK and Norway. This means a third party could begin a “test run” case before the UPC to try out their arguments but the decision would only be applicable to the UPC states, not the UK and Norway.
참여를 거부할 만한 타당한 이유는 무엇인가요?
- 특허의 유효 기간 내내 특허가 한 곳에서 취약한 상태로 남아 있기를 원치 않을 것입니다. EPO의 이의 제기 기간이 끝나면, 이의를 제기하는 측이 국가별로 개별적으로 공격을 가해야만 하도록 만들어야 합니다.
- 귀하는 UPC에서의 소송 비용이 한 국가의 법원에서 진행되는 소송 비용보다 더 많이 들 가능성이 높을 것이라고 우려하고 계십니다.
- You don’t want your patent to be challenged in a court that is not yet tried and tested; greater predictability is important to you.
- 여러 당사자가 관련된 복잡한 소유권 또는 라이선스 상황이 존재하여, 단일한 중앙 차원의 조치를 조율하기 어렵거나, 당사자들이 각자의 국내 법원에서 조치를 조율할 수 있도록 하는 것이 바람직한 경우.
- 해당 특허의 라이선스 계약 조건에 따르면, 핵심적인 공격이 발생할 경우 라이선스 수익 흐름에 심각한 악영향을 미칠 수 있다.
- You want to make it more difficult for a competitor to “clear the way” for launching a product across multiple EU countries or to block their use of the UPC as a “test run” forum.
- 당신은 현 상태를 유지하고 싶어 합니다.
UPC 시스템을 계속 이용해야 할 타당한 이유는 무엇인가요?
- 귀사는 여러 EU 국가를 대상으로 한 침해 소송을 검토하고 있으므로, 유럽 전역에 적용되는 판결 및 가처분 명령을 확보할 수 있는 능력은 귀사에게 매우 중요합니다.
- You perceive that there is national case law or precedent that might be adverse to your case (whether in terms of infringement or validity) and therefore you would value the fresh start offered by the UPC system.
- You are keen to be involved in the early days of a new system so that you can help shape how it evolves.
- 잠재적인 침해자들에게 유럽 전역에 걸친 가처분 명령 및 손해배상 청구가 이루어질 가능성이 있음을 시사하여 억제 효과를 발휘하고자 합니다.
- 자신의 특허가 이의를 제기당할 것이라고는 예상하지 않으며, 제외 신청과 관련된 행정 절차를 처리하고 싶지 않습니다.
- 귀하께서는 중앙 공격이 발생하더라도 귀하의 입지를 충분히 보호해 줄 것으로 판단되는 다른 지적재산권, 예를 들어 출원 중인 유럽 분할 특허나 등록된 국내 특허 등을 보유하고 계십니다.
What do I need to register an opt out for a European patent?
Under the opt out rules, we can only opt out a European patent if we have the authorisation to do so from the current legal owner and we have their name and address, irrespective of whether they are the owner of record at the EPO and/or at the local patent offices where the European patent was validated.
If there are multiple owners, we need agreement from them all, as well as their name and address details. If there are granted Supplementary Protection Certificates (SPCs), the owners of these rights also need to authorise the opt out and we need their name and address details.
If there are licensees, we do not directly need their consent or details, but the terms of the license may dictate that they need to be consulted or may even dictate what the decision is on opting out.
When and how can I register my decision to opt out?
Working from the suggested go live date of 1 June 2023, there will be a sunrise period of three months before this date, so starting on 1 March 2023, during which opt outs can be filed.
Once Germany completes the ratification process, therefore finally setting the go-live date and start of the sunrise period, if we are the European patent attorneys of record, we will be contacting you in relation to all granted EPO patents if you were our instructing contact at the time of grant in relation to whether an opt out is needed.
We will provide schedules of all such granted patents, grouped by the patent owner according to our records, but can only attend to an opt out if we receive positive instructions to do so including confirmation that all owners agree and their name and address details.
As the sunrise period is relatively short and the opt requirements are onerous, please consider now what planning is needed to allow you to provide instructions within the three-month window, including authorisations and name and address details for the required interested parties, or alternatively that you will be able to assist us in reaching the correct contact person for instructions.
Delaying grant
If your application has not yet had a Communication under R71(3) EPC issued, or if your application has an outstanding Communication under R71(3) EPC, we can now request that the date of grant is delayed until on or after the go-live date of the UP/UPC, so that you have the option of proceeding with a UP.
This does not tie you into having to proceed with a UP but simply delays grant so that you can make that choice.
Proceeding with a UP does however mean that you cannot opt out of the UPC for that patent.
If you would like to discuss your UP and UPC options, please contact the authors Lucy Trueman or Yvonne Johnson, or your usual Barker Brettell attorney.
“If owners do not wish their patents to be centrally vulnerable under the UPC they need to take action to opt out before the system goes live.”
