UPC on course to come into effect in 2017
Update on the Unitary Patent and the Unified Patent Court (UPC)
Since our last update on the status of the implementation of the UPC, the UK’s decision to leave the EU has cast some doubt over the future of the new system and, in particular, the UK’s involvement within it.
In order for the UPC to come into effect, the UPC Agreement must be ratified by 13 participating states, including the three states with the most European patents in effect in 2012, namely France, Germany and the UK. At the time of writing, 11 states have ratified the agreement, including France, meaning that ratification by the UK and Germany will bring the agreement into effect.
The German parliament has recently passed the draft legislation required to ratify the agreement, whilst in the aftermath of the Brexit vote, the UK government has also confirmed it is proceeding with preparations to ratify (see the press release here). Both ratifications are expected in spring 2017, which will allow the “Provisional Application Phase” to commence, during which the organisation will be established and judges and other personnel will be recruited. The UPC Preparatory Committee expects the Court to become operational in December 2017 (see the post here).
But what does this all mean for proprietors of existing European patents and patent applications? Unitary patent protection will provide a more streamlined and cost-effective system for prosecution and enforcement across a number of participating countries. However, with central enforcement comes central revocation, presenting the possibility of loss of protection across several countries in a single action.
Before the UPC comes into force, a “sunrise period” will commence (expected to start in September 2017), during which proprietors will be able to opt all existing European patents and published patent applications out of the UPC and choose to use existing national courts as normal. Whilst it will continue to be possible to opt-out after the UPC comes into force, this will not be possible after any action is filed in the UPC. If you hold any existing European patents or published patent applications, it is, therefore, important to consider whether or not you wish to opt-out before the UPC opens.
Whether or not you choose to opt-out will depend entirely on the needs of your business and the importance of the protection to you. You will need to consider a number of factors, such as how strong the patent is and the value of its protection to your business, the likelihood of opposition, in which and in how many European countries you wish to maintain protection and the uncertainty of operating under the jurisdiction of a new international court, amongst many others.
The projected timelines are all dependent on ratification and we will continue to provide further updates as things develop. For more information on the UPC, please see our recent presentation given at AIPPI Japan here.
If you would like advice on preparing for the UPC and developing your opt-out strategy, please contact any of our attorneys.
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