Long-awaited start of the new unitary patent at the turn of the year
The start date for the new unitary patent system has finally been set. The Administrative Committee has announced that the Unified Patent Court will start its work on April 1, 2023.
The Federal Republic of Germany, which has so far held back ratification of the Unified Patent Court Agreement as a “gatekeeper”, intends to deposit its instrument of ratification in the week before Christmas (week 51). With this act, the Agreement on a Unified Patent Court will formally enter into force and the three-month so-called “sunrise period” will begin.
What does this mean in practice?
From the date of deposit, at the latest from January 1, 2023, it will be possible to apply to the European Patent Office for a patent with unitary effect for European patents granted after that date. This will also include European patent applications for which an intention to grant (the so-called Rule 71(3) communication) has already been issued by the European Patent Office today, but the deadline for filing claim translations and paying the grant fee is still running.
In addition, it will be possible for existing European patents to opt out of the jurisdiction of the Unified Patent Court as of January 1, 2023.
What is an opt out?
The Unified Patent Court Agreement (UPCA) provides that the new Unified Patent Court will automatically become competent also for all existing European patents. This means that an infringement of a European patent for all member states of the Agreement (currently 17) can be prosecuted in a single proceeding before the Unified Patent Court. At the same time, however, an existing European patent can also be declared invalid for all member states of the Agreement in a single invalidity proceeding before the Unified Patent Court in the case of a invalidity action by a third party.
Not every patent owner will want this. Proceedings before the Unified Patent Court will be several times more expensive than infringement and invalidity proceedings in Germany so far. The case law practice of the new Unified Patent Court is still unknown and not consolidated. Therefore, for existing patents as well as for European patents for which no unitary patent will be applied for in the future, there is the possibility to exclude the jurisdiction of the Unified Patent Court by an opt-out declaration. As long as no infringement proceedings are pending, there is also a one-time way back to the Unified Patent Court by means of a so-called opt-in declaration.
When is a unitary patent worthwhile?
The costs of a unitary patent will roughly correspond to the costs of a European bundle patent validated in four member states. Thus, for more than four validation countries, which also participate in the unitary patent system, a unitary patent will result in cost advantages. However, it must be kept in mind that with a unitary patent, individual countries cannot be dropped in future years to reduce costs, as is the case with a bundle patent. The unitary patent can only be renewed in its entirety or not at all.
So what decisions are now pending?
Once a European patent is to be granted, the applicant must consider whether to continue to validate in individual countries or to apply for a unitary patent for the participating EU countries. For non-EU countries or non-participating EU countries (e.g. Great Britain, Switzerland, Spain, Poland and Hungary) nothing changes. In these countries, national validation is still required in order to obtain protection.
In addition, owners of European patents must consider whether they want to opt out of the jurisdiction of the Unified Patent Court, at least for very important patents, and declare an opt-out before the end of the sunrise period.
We will be happy to advice you on these issues.
### News update as of 5 December 2022: Start of the Sunrise Period postponed to 1 March 2023 ###
The initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period with an entry into force of the UPCA on 1 April 2023. Now, the start of the Sunrise Period is postponed for two months to 1 March 2023.
The additional time was desperately requested by professional stakeholders since unfortunately, essential technical tools being necessary for the strong authentication are still only partly available. The strong authentication will be required to access the Case Management System (CMS) and to sign documents already in the Sunrise Period, see here.