Recent progress towards the start of Europe’s Unified Patent Court and Unitary Patent
As has been widely reported, there will soon be significant changes to Europe’s patent system, with a new specialist patent court system (the Unified Patent Court or UPC) and a new option for unitary patent protection covering many of the states of the European Union.
The UPC is expected to start handling patent infringement and revocation actions from 1 June 2023. This is a delay from the previous planned start date of 1 April 2023.
We are continuing to monitor developments as we get closer to the opening of the UPC and close to the European Patent Office (EPO) accepting requests for unitary protection.
The following recent milestones deserve to be mentioned here.
We recommend that all owners of unexpired European patents (or their patent portfolio managers) take the following actions actions by the end of February 2023.
- Identify European patents and pending applications that may need to be opted out of the UPC.
- Check ownership of each European patent and application that may be opted out, including checking this for each contracting state of the European Patent Convention in which the European patent remains in force or which was designated in an application that is still pending (not only UPC states), since opt outs can only be registered at the request of all of the owners of the patent.
- Check any licence obligations that relate to jurisdiction.
- Make a conscious decision regarding which European patents (and applications) should be within the jurisdiction of the UPC and which should be “opted out” of the jurisdiction of the UPC, and instruct a reliable IP services provider to handle the registration of opt outs when this becomes possible in 2023.
Additionally, applicants of European patent applications that have been approved for grant by the EPO should consider whether to request delayed grant and unitary effect (this will only be an urgent consideration for patent applications that are approved for grant in 2022 and early 2023).
Please contact AA Thornton’s team of European Patent Attorneys and IP litigation experts if you have any questions regarding:
- The Unified Patent Court of the Unitary Patent, and their relevance to your business;
- The option to protect some or all of your existing European patents from revocation in the new court, by applying to opt them out of the jurisdiction of the UPC;
- Withdrawal of opt outs;
- Patent enforcement in the new court; and
- Applying for revocation in the new court.
We will be happy to discuss which options are worth considering for your business.
We will continue monitoring legal developments and we will update our website when there are significant UPC and UP updates during 2022 and 2023. You can also expect frequent updates to the UPC website in the “sprint finish” towards 1 June 2023.
AA Thornton IP LLP – 5 December 2022