On 1 June 2023, the Unified Patent Court (UPC) will open its doors and on 1 March 2023, the sunrise period for opting out of European patents from the jurisdiction of the UPC will begin.
Soon, the Unified Patent Court Agreement will enter into force for the 17 EU countries, which have ratified it: Germany, France, Italy, the Netherlands, Belgium, Luxembourg, Sweden, Denmark, Finland, Estonia, Latvia, Lithuania, Austria, Portugal, Slovenia and Malta (= UPC countries). This has major implications for holders of European patents and patent applications.
From 1 June 2023, the European Patent Office can grant European patents “with unitary effect” or Unitary patents, which shall be valid in all UPC countries. The UPC will handle disputes on Unitary patents exclusively. The cost of maintaining a Unitary patent is much lower than the cost of a European patent valid in four or more UPC countries.
In addition, from 1 June 2023, the UPC can also handle cases based on European patents for all UPC countries where they are valid. This means it will be possible to obtain an injunction for all UPC countries where the European patent is valid, so that parallel proceedings before different national patent courts will no longer be necessary. However, the flip side is that the UPC can also invalidate (central attack) a European patent for all UPC countries where it is valid. Under current law, this is not possible.
Patent owners who want to prevent their European patent from being able to be invalidated for all countries by the UPC via a central attack can file an opt-out: Opted-out European patents can only be enforced in national courts. The opt-out can later be revoked as long as the European patent in question has not been litigated in national courts.
As it is expected that for many European patents opt-outs will be filed, they can be filed in the sunrise period from 1 March to 1 June 2023. A strategy may be to file an opt-out for European patents first and revoke withdraw it when it is desired to enforce this patent in the UPC.
Do you hold one or more European patents? If so, you must decide for each European patent before 1 June 2023 whether or not you wish to file an opt-out. We will be happy to advise you on the new patent law and the strategic choices to be made.
