Out-Law / Your Daily Need-To-Know

Plans for Unified Patent Court to operate from 1 April 2023

Out-Law News | 07 Oct 2022 | 5:02 pm | 2 min. read

The body responsible for setting up the Unified Patent Court (UPC) has said it is planning for the new judicial system to become operational from 1 April 2023.

The date was communicated by the UPC preparatory committee alongside a new implementation roadmap (3-page / 911KB PDF) that outlines indicative timeframes for completion of the final steps in establishing the court framework.

Paris-based patent law expert Emmanuel Gougé of Pinsent Masons said it is the first time the UPC has made an official public pronouncement of a specific date it is working to for entry into force of the court.

“The committee made very clear that this plan is only indicative and reflects the current state of the UPC project,” Gougé said. “Given the number of tasks and milestones to be achieved by then, including the finalisation of the case management system that will be core to how the UPC functions, it is not unlikely that a shift in the timeline could be announced at a later stage. It is nevertheless clear that all stakeholders should now be in the final stages of preparation and anticipate all steps to be taken by then.”

The UPC is being set up to provide a dedicated judicial system for litigating new unitary patents. Classic European patents that are not specifically opted-out of the UPC’s jurisdiction will also be subject to the new court system, whereas those that are opted-out will remain subject to the sole jurisdiction of national courts during the transitional period.

Steps to opt-out a classic European patent can be taken as soon as the ‘sunrise period’ for the new UPC system commences. According to the newly disclosed implementation roadmap, the sunrise period is now due to begin on 1 January 2023. The sunrise period will last three months, though the right to opt-out patents will continue to apply up until one month before the end of the transition period which will commence from the date the UPC comes into force.

The transition period will last at least seven years and during that period the UPC and national courts around Europe will share competencies for litigating European patents: businesses can choose to litigate European patents before the UPC or national courts.

Patent experts at Pinsent Masons have previously warned that European patent owners who delay their decisions on whether to opt-out their existing patents from the UPC’s jurisdiction until after the end of the so-called ‘sunrise’ period may be exposing their patent portfolios to unintended risks. This risk applies in respect of applications filed during the transitional period too.

Pinsent Masons experts have also called on patent owners and their exclusive licensees to undertake a “GDPR-style audit” of their licence agreements over the coming months and update them as required if they want control over how the underlying patents are litigated in Europe in the years to come.

Notable milestones in the establishment of the UPC trailed in the implementation roadmap that are expected to be passed over the coming weeks include the recruitment and appointment of judges. Germany is expected to deposit the legal instrument necessary to ratify the UPC Agreement – the treaty that establishes the UPC system itself –in the week before Christmas this year, thus triggering the start of the sunrise period.

Germany’s ratification of the UPC Agreement is necessary for the UPC to become operational. That is because the treaty requires that at least 13 EU countries, including the three with the most European patents in effect in 2012 – Germany, France and, with the UK no longer a member state, Italy – must pass national legislation ratifying the UPC Agreement in order for it to have effect. 

France and Italy have already ratified the UPC Agreement, along with 14 other EU member states. Most other EU member states also support the UPC project, though three – Spain, Croatia and Poland – have so far indicated that they will not participate in it. The government in Ireland has confirmed that it intends to put the country’s participation in the UPC system to a public vote in a referendum to be held either in 2023 or alongside local and European elections in 2024.

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