For over 50 years, European governments have aspired to unify their patent systems so that one patent can cover many states and a single patent court can hear disputes across those states.
After a significant delay triggered by a series of unsuccessful constitutional challenges before the German Federal Constitutional Court, Germany has now taken steps to ratify the Agreement on a Unified Patent Court (UPCA) and the UPC Protocol on Provisional Application (PAP-Protocol)[1], and the long-awaited court and patent system may soon be a reality.
Our European litigators expect that the new court could be up and running in 2022 and we are already gearing up to make use of this valuable new forum. David Wilson, leader of our dispute resolution practice group, comments:
“This is exciting news and we are ready to support our clients as they prepare for this change. The firm has a deep bench of patent attorneys and litigators who are already experienced co-ordinating pan-European litigation. We are delighted that the chance to represent our clients at the Unified Patent Court has now come a big step closer.”
The new system involves the Unified Patent Court (UPC) and the Unitary Patent (UP). UPs will be a new option for the fate of a patent application granted by the European Patent Office (EPO) following the normal examination under the current system. A UP will have unitary effect across all participating member states, providing coverage for ultimately 24 countries via a single unitary right. The UPC will have exclusive jurisdiction over UPs and all EPs granted by the EPO, including those already granted (subject to transitional provisions). The UPC’s rulings would be enforceable across all of the participating member states. More information on the new system can be found on our website here.
In order for the new system to arrive, a number of states need to approve an administrative update in order for the system to have a soft-start via the PAP-Protocol. Only two more participating Member States need to ratify the PAP-Protocol, and these further ratifications are expected to happen this autumn, with the UPC Preparatory Committee predicting the soft-start period starting 8 months later, around mid-2022[2].
This soft start will allow staff and judges to be recruited and the underlying systems to be made ready. We also expect there will be a “sunrise” period a few months before the UPC opens its doors, during which patentees can opt their existing granted EPO patents out of the court’s jurisdiction. Preparing for the opt-out process should be the focus for all patentees ahead of a possible sunrise period in 2022, as completing this task before the UPC opens its doors is important (as discussed in more detail on our website here). Our integrated teams of European litigators and patent attorneys are on hand to help you decide whether to opt out from the UPC’s jurisdiction.
Looking to the future, once the UPC opens its doors the EPO will be able to start granting the new UPs. These new unitary rights will cover at least 15 countries from the start of the system (likely in 2022), and will offer a cheaper alternative to conventional national validation as summarised in our calculator here. UPs can be litigated only at the UPC, so selecting these new rights will involve a degree of confidence in the new court’s ability to handle any litigation on that patent in the future. In parallel, after an application is granted by the EPO the patentee will be able to include all the states not covered by the UPC, such as Spain, the UK, Poland and Switzerland, by conventional national validation. We will be able to handle UPs and conventional national validation across all the countries offered by the EPO. Our European patent attorneys look forward to requesting UPs at the EPO as soon as possible, and we expect some applicants to delay grant in order to benefit from these new rights.
The UPC will provide an entirely new court system, with a first instance and appeal courts able to hear disputes about patents across a wide range of European states, as summarised on our website here. It will have wide powers to hear infringement and validity cases, with active case management that is planned to ensure the parties fully explain their case in writing at the earliest possible opportunity, while also allowing for UK-style disclosure and cross-examination of witnesses. Our litigators are particularly excited by the prospect of acting at this new court, based on their decades of experience handling pan-EU and UK patent actions.
So, the new system is made up of the UPC and the UP, with the UPC also having jurisdiction over all patents granted by the EPO (unless they are opted out). The arrival of the new system was previously delayed by a long running court battle in Germany, where ultimately the German Federal Constitutional Court largely dismissed an earlier constitutional complaint against the UPC Agreement. The only reason the complaint was upheld related to a voting formality and that issue was addressed by the new legislative process completed on 18th December 2020. Other delays were caused by the UK’s decision to leave this new system, which means at some point the participating member states may need to reallocate some of the UK’s UPC responsibilities, in particular choosing a state to host the Central Division for life science disputes. The German government’s consultation document suggests these amendments could be made once the new system is up and running, with references to the UK in the existing agreement simply being struck through in the meantime. While the UK government has stated that it will not be seeking involvement in the UP/UPC system, this will not impact the current European patent system: patent applications filed at the EPO will still cover the UK and will be litigated in the UK national courts as usual.
Regardless of how the UP and UPC project develops there are no implications for the current European patent system run by the EPO, which is entirely separate from the EU. We are looking forward to offering clients the chance to both obtain UPs using the existing EPO procedure and enforce their patents across Europe using the UPC when the system is finally up and running. Following the latest news from the German Constitutional Court, these big changes to European patent law are finally on their way.
[1] The German Federal President signed the ratification bill on 7 August 2021, and the legislation required for German ratification was published in the Federal Law Gazette Part II No 18 (Bundesgesetzblatt Teil II Nr. 18) on 12 August 2021.
[2] https://www.unified-patent-court.org/news/what-decision-german-federal-constitutional-court-means-unified-patent-courts-timeplan
