When considering taking your business abroad, it is crucial to protect your intellectual property assets. Such protection may take the form of a patent, which gives you a right, a monopoly, for a limited period of time, in exchange for a complete disclosure of the invention for which you wish to obtain protection under the law.
Obtaining a patent is often a tedious procedure which presupposes important administrative steps which must usually be undertaken in every single country in which you wish to protect your invention. This, however, will soon change in the European Union (hereinafter “the EU”), with the launching of the Unified Patent Court (hereinafter “UPC”), which will be at the core of the new EU Unified Patent System. Europe’s new patent regime will be a major reform in the sector of intellectual property.
What is the UPC?
24 Member States of the European Union 1 have agreed to create a specialized patent jurisdiction in the EU, the Unified Patent Court (UPC). The UPC comprises judges from all participating EU Member States. The goal is to provide simplified, quicker, and more efficient judicial procedures linked to patents in the EU by panels comprising of both legally and technically qualified judges. This new unitary patent protection will make the existing European patent system simpler and less expensive for inventors (individuals, companies, and research organizations alike). In addition, it will put an end to the complex patent validation requirements between participating EU Member States. The European Commission considers that this new EU patent system will “stimulate research, development and investment in innovation, helping to boost growth in the EU 2 .”
While the UPC was established by an international agreement on 19 February 2013, i.e, the Agreement on a Unified Patent Court (AUPC), the new system is expected to start operating on 1 June 2023 and to initially cover 17 EU countries 3 . As a result, from 1 June 2023 onwards, users will have the possibility to lodge their cases regarding EU patents within the UPC system.
The UPC will have the exclusive jurisdiction to decide on the infringement and validity of European patents and the unitary patent, thus replacing the national courts for European patents. It is a two-tier court, comprising a lower court and an appeal court in Luxembourg. The judges appointed to the different chambers of the UPC have an expertise in patent matters.
The first level court will be composed of (1) local division when the contracting State has put one in place, (2) regional divisions in the case of States wishing to unite their efforts and avoid the costs of a local division, as well as (3) a central division based in Paris with offices in London and Munich for certain technical fields. For instance, patent applications concerning transportation, textile industry, construction, physics, electricity, electronics and telecommunications will solely be examined by the central division in Paris.
What does this reform mean for businesses, entrepreneurs, and individuals?
The launching of the UPC system signifies that it will be easier for businesses, entrepreneurs and individuals alike to obtain a patent that is valid in different EU countries. However, it also means that those who are currently applicants for and owners of a “classic” European patent, as well as holders of a supplementary protection certificate (SPC) 4 issued for a product protected by a “classic” European patent, must decide whether they wish to exclude their application, patent or SPC from the exclusive competence of the UPC. If they do so, the UPC will have no jurisdiction concerning any litigation related to this application, patent or SPC. This in turn means that, if an opt-out is made, it is guaranteed that a third party will not be able to start a central revocation action at the UPC, which could invalidate a patent in all contracting EU Member States. Hence, a decision to opt out is a defensive one as it will prevent the concerned patents from being revoked in a single court action. The current procedure to revoke a patent, which must be brought on a country-by-country basis, will hence subsist for patent applications and patents covered by an opt-out decision. However, it will not be possible to opt-out for applications presented after the UPC becomes effective on 1 June 2023.
On the other hand, in respect of current applicants and holders of a classic European patent that do not opt-out of the UPC’s application, they will benefit from additional flexibility and be able to decide to enforce in the national courts, as it currently is the case, or to enforce a single infringement action before the UPC for numerous European patents, as a single action. Consequently, if you are a current applicant or a holder of a European patent, you must weigh in the pros and the cons of such a decision to opt out of the UPC’s application.
The opt-out mechanism will be effective for the entire life of the European patent concerned. It will be possible to do so starting from the beginning of the three-months “sunrise period,” on 1 March 2023. Opting out is a free administrative act which will need to be filed with the European Patent office. It will be possible to do so until the end of the transitional period, which will last seven years after the date of entry into force of the Agreement on a Unified Patent Court (AUPC) 5 .
At the Law Office of S. Grynwajc, PLLC, we are admitted as lawyers both in Europe and in North America (United States and Canada) and have a particular expertise as intellectual property. Consequently, if you wish to protect your intangible assets through one or more intellectual property titles in Europe, do not hesitate to contact us, we will be delighted to assist you in your efforts!
1 17 EU Member States in which the Unified Patent Court Agreement (UPCA) is in force: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden and 7 EU Member States who signed the UPCA: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
2 “The unitary patent system”, European Commission
3 Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden
4 “Supplementary protection certificates (SPCs) are an intellectual property right that serve as an extension to a patent right. They apply to specific pharmaceutical and plant protection products that have been authorized by regulatory authorities”; see: “Supplementary protection certificates for pharmaceutical and plant protection products”, European Commission, online: < https://single-market-economy.ec.europa.eu/industry/strategy/intellectual-property/patent-protection-eu/supplementary-protection-certificates-pharmaceutical-and-plant-protection-products_en >.
5 Agreement on a Unified Patent Court, articles 83 (1) (3).
