Excellently prepared for the UPC
The UPC launch is approaching. The Agreement on a Unified Patent Court (UPC Agreement, or UPCA) is scheduled to come into force on June 1, 2023. What does this mean for your company and your patents?
You will get uniform protection for your ideas in – currently – 17 EU countries, and potentially up to 25. This means that in each member state the new unitary patent can be enforced across borders in one central lawsuit. Patents are filed as usual at the European Patent Office (EPO). What is changing is the authority: instead of the individual national courts previously responsible, the new Unified Patent Court (UPC) will be the one enforcing the unitary patent. The new court is also responsible for determining validity. In other words, invalidity proceedings against a unitary patent can be filed centrally and the declaration of invalidity will then be effective for all 17 countries in equal measure.
Useful to know: the UPC will automatically have jurisdiction for existing patents granted by the EPO before the UPCA enters into force. From March 1, 2023, however, you will have the opportunity to submit an opt-out request within a three-month “sunrise period”. This would mean that patents granted by the EPO remain in the existing system and national courts retain their jurisdiction. A declaration of invalidity would then only be effective in the country in which the invalidity proceedings were filed.
COHAUSZ & FLORACK will assist you with all questions regarding the UPC launch. Our specially established UPC Task Force has been preparing for the new system for a long time with the utmost care and a wealth of expertise.
Are you already one of our clients? Then we will inform you individually and specifically about the steps that need to be taken regarding your patents and existing IP rights. No matter whether you decide on the unitary patent directly or you first choose the opt-out variant: we know what challenges you face and have our eye on all the deadlines.
UPC and Unitary Patent: new opportunities for your IP rights in the EU
A European court that handles patents independently, that guarantees a higher degree of legal certainty due to it being a central authority, and that ensures that proceedings are conducted in a more efficient and cost-effective manner: that is the aim of the Unified Patent Court (UPC). The UPC will be represented at four important locations in Germany (Düsseldorf, Munich, Hamburg, and Mannheim).
Along with the Court itself, a “European patent with unitary effect” (also referred to herein as a “unitary patent”) will be introduced. This will make it possible to obtain uniform patent protection in up to 24 EU member states after a European patent has been granted.
The Agreement on a Unified Patent Court (UPCA) has been formally called into question a number of times in recent years, stalling the launch of the UPC and the unitary patent. But all signs are now pointing to “go” and the UPC is expected to commence its work by the beginning of 2023 at the latest.
What’s in store for you as an internationally active company, a patent holder, or a patent applicant? What arguments are there for or against applying for a unitary patent? And what costs might you expect? We will give you all the information you need here. Everything you need to know to stay innovative in Europe and to get the most out of your IP rights!
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Opt-in or opt-out: Tactically well positioned for the UPC
The UPC has opened its doors and commenced operations. The sunrise period has expired. Many European patent holders have successfully submitted their opt-out declarations.
EU filing strategies for standard essential patents (SEPs) under the UPC
Using the German legal system to avoid risks
The Agreement on a Unified Patent Court (UPC Agreement, UPCA) is expected to enter into force on June 1, 2023 – which is also when the UPC itself is set to open. The sunrise period will begin on March 1, 2023. From the beginning of this period, you will be able to file opt-out requests and thus maintain the status quo for your European patent applications and patents, excluding the new system.
With an opt-out request you can remove your European patent application and your traditional European patent from the jurisdiction of the Unified Patent Court (UPC). As a result, the national courts retain their exclusive jurisdiction for infringement and nullity suits. With an opt-out, you “play it safe” and prevent third parties from taking action against your patent at the UPC. However, an opt-out also denies you the opportunity to take action against third parties at the UPC for your patent and thus benefit from cross-border enforcement, but only as long as you do not withdraw the opt-out (“opt back in”). An opt-out request can be filed from the beginning of the sunrise period to the end of a transitional period of seven to fourteen years after the UPCA enters into force and, provided you have not opted back in, is valid for the entire term of the patent. A prerequisite for an opt-out, however, is that no action concerning the patent in question has yet been brought before the UPC. An opt-out request must be filed to the UPC itself and not to the EPO.
To still be able to make use of the new unitary patent system after opting out, you as a patent applicant or patent holder have the chance to withdraw from an opt-out once. Like opting out, however, opting back in is only possible as long as no action relating to the patent in question has been brought before a national court. After opting back in, it is not possible to opt out again.
Up to 24 EU member states will participate in the new unitary patent system. Currently (as of January 2023), 16 EU countries have ratified the Agreement on a Unified Patent Court (UPCA). The UK has withdrawn its ratification as a result of it exiting the EU. Spain, Poland, and Croatia are also not participating in the unitary patent system for the time being for various reasons.
The court of first instance has a central division in Paris and a division in Munich, as well as several local and regional divisions in the contracting member states. Germany – Europe’s most important court location for patent infringement proceedings – is the only member state with more than one regional division: in Düsseldorf, Mannheim, Munich, and Hamburg. The Court of Appeal will have its seat in Luxembourg.
Patent applicants or patent holders can use the sunrise period to file opt-out requests before the Unified Patent Court (UPC) opens. This ensures that third parties do not prevent an opt-out through nullity suits brought shortly after the opening of the UPC. The sunrise period is currently scheduled to start on March 1, 2023, three months before the UPC launch.
When the Unified Patent Court (UPC) opens, you will also be able to obtain a unitary patent (UP) from the European Patent Office (EPO), which will ensure uniform protection in up to 24 EU states. To do this, you first apply for a European patent (EP) in the traditional way. Once this has been granted, you can submit a “request for unitary effect”. This must be done no later than one month after publication of the mention of grant in the European Patent Bulletin. A new register exists at the EPO for the UP, which contains information on the legal status as well as licenses, transfers of rights, limitations, revocations, and lapses of unitary patents. As the patent holder, you can register transfers of rights and licenses centrally with the EPO. This does away with the need for parallel procedures in the national patent registers of the individual countries. You can find more information about the UP on the EPO website.
In many cases, yes. A unitary patent (UP) is usually cheaper than a traditional European patent (EP), which is validated and maintained in four (or more) UPC contracting states. Translation costs, fees from national patent offices, and costs charged by lawyers or other service providers no longer apply. In principle: the more UPC contracting states you consider in your IP strategy, the more cost advantages a UP brings.
Yes. The UP and the German national patent complement each other particularly well. Those who opt for such a “German-European tandem” of German patent and UP will have good prospects, as the German courts have been synonymous with legal certainty for decades and are a cornerstone when it comes to the enforcement of European patents. With such a tandem solution, you as an applicant will obtain the comprehensive territorial protection of the new UP early on, but thanks to the German patent flanking it you do not have to forego the legal certainty you are accustomed to from the European bundle patent when it comes to infringement and nullity suits. However, you should take note of the differences between the German and the European grant procedures and which drafts are suitable when filing which application. Experience in both systems is called for.
For SEPs, multiple EU states are typically named in the traditional European patent (EP), as standard-compliant devices are commonly available in almost all states. As the unitary patent (UP) offers uniform protection in 24 countries at the same time, it could become the first choice for SEP holders. In addition, an SEP is usually maintained for the maximum term of 20 years – so the UP pays off in many cases. It is estimated that the annual fee savings alone could amount to 125,000 euros per patent. Simultaneous protection from a UP and German patent (“German-European tandem”) is also worth considering, as Germany has been one of the world’s most important court locations for SEP infringement suits for more than two decades. These advantages of German jurisdiction coupled with access to the UPC can be secured by combining a UP and a German patent.
As a result of Brexit, the United Kingdom will now no longer participate in the unitary patent (UP) and the UPC. This means that businesses will not be able to take advantage of the UP and UPC in the UK. Instead, as before, they will have to rely on national patents or European patents validated in the traditional way and the UK courts to protect their inventions and when taking action against competitors in the UK. However, if a British company infringes an existing European patent within the EU contracting states, it may have to answer to the UPC.
Further helpful information on all questions concerning the new unitary patent (UP) can be found on the website of the Unified Patent Court (UPC).
Our established practice of working with external attorneys-at-law in infringement proceedings will not change. We will handle proceedings according to the tried-and-tested “Düsseldorf School” together with highly qualified and highly experienced external law firms, also and especially at the Unified Patent Court. In doing so, we are combining the outstanding expertise of specialized law firms with our decades of expertise in validity proceedings, in particular in validity proceedings running in parallel to patent infringement proceedings. By working together according to the “Düsseldorf School”, we further unite the different perspectives from which preeminent external attorneys-at-law and patent attorneys from our firm view such patent disputes consisting of patent infringement and validity proceedings running in parallel.
Opting out: your decision for or against the UPC
If the UPC system does not align with your current IP strategy, you can also choose to opt out of it. This means that if you opt out of the UPC, your European patents (i.e. those already granted by the EPO) will remain in the existing system for a transitional period of at least seven years and the national courts will retain their jurisdiction in matters concerning these opted-out patents. Find out more about the pros and cons of opting out here!
