From the second half of 2022 to the beginning of 2023, the Unitary Patent system (UP) will come into force.
With the UP entered into force – at the end of the granting procedure of a European Patent, before the European Patent Office (EPO) – it will be possible to obtain a Unitary Patent valid in all Member States of the European Union and which have decided to participate in the UP system. They are currently 17: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Other Member States of the European Union (Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia) should ratify it having not declared anything in opposition, while Spain, Poland and Croatia do not intend to join this Unitary Patent system for now.
A UP will be a single patent title valid in all the European Union Member States that have decided to adhere to the UP system. In all the other States adhering to the European Patent Convention that have not adhered to, or cannot adhere to, the UP system, national validations will still be necessary (the so-called “bundle” patents). This implies that a single maintenance fee will be due for all the States adhering to the UP system, for the other States the traditional system will remain in force.
A new international court – the Unified Patent Court (UPC) – has been created with jurisdiction for infringement and revocation actions both for Unitary Patents, and classical European Patents. For a first transitional period of at least 7 years the National courts could still have jurisdictions on the classical European Patents.
The UPC will be divided between a central Court and local or regional Courts.
The Unified Patent Court will have a single jurisdiction for cases of infringement, patent revocation, but also of negative assessment. Both ordinary legal actions and preliminary procedures will be possible. For example, an infringement ascertained by the Unified Patent Court will have its effects in all the States adhering to the UP system, just as the nullity of a UP will result in the loss of rights in all these territories.
Yes. All granted European Patents and European Patent applications still pending before the entry into force of the UP system and having a filing date later than 01 March 2007, will automatically be considered as falling within the jurisdiction of the UPC. For granted European Patents, the new system will apply only to States where the European Patent has already been validated. For pending European Patent applications, the new system will be applied to all Member States of the European Union adhering to the new system at the time of registration of the unitary effect by the EPO. If the holder of these rights wants to keep them with the current system, he will have to optionally exclude his titles from the so-called "SUNRISE" period which will should last 3 months and will run before the entry into force of the new system.
Yes. The EPO has provided some transitional measures to allow pending patent applications, for which an intention to grant has been issued, to fall within the UP system. To do so, an applicant may request a delay of the publication of the grant in the European Patent Bulletin until after the coming into force of the UP system. It is also possible to file an early request for obtaining the unitary effect for the patents that are going to be granted. In this second option, one also needs to request the delay of publication of the grant as said above.
Yes. For a transitional period of 7 years (possibly extendable for another 7 years), the owner of a pending patent application or a granted patent will have the choice to withdraw each pending patent application or patent from the UP system. This is the so-called “OPT-OUT”. The withdrawal is possible provided that in the meantime no action is brought before the UPC court concerning the specific patent application or patent. This means that the patents or patent applications for which the "OPT-OUT" option has been chosen will not fall within the competence of the newly established UP system.
Yes. An applicant or a patent proprietor can withdraw the "OPT-OUT" request, such that the involved patent or patent application would fall again under the competence of the UPC. This can be done only once and only provided that no proceedings before a national court have been initiated.
The entry into force of this system, which presents itself as a system of the European Union, but which at the moment is not yet so, requires companies and their patent attorneys to take the right time to draw together a specific strategy for each specific patent, having in mind that this decision will necessarily affect not only the management, the company budgets, but also their patent portfolio for the underlying technical content.
With regard to the patent portfolio, a system that juxtaposes with the traditionally known one imposes a diversification of protection strategy within the European Union, on the basis of economic interests, the competitive environment of the Company as well as on the basis of the effective strength of the inventive idea, the possibility to use the patent protected technology directly or indirectly, as well as the hypothesized time of exploitation.
Thus, with the new UP system patent procedures become more and more an essential part of a company's strategy.
GLP provides its decades of international experience in the world of intangible assets and the diversity of its customers and is at your complete disposal to discuss how to plan and manage patent portfolios in view of the new opportunities arising from this new system.
For this purpose, we provide an informative guide to the UP system as a general overview, available here below.
Furthermore, we provide an exclusive e-mail firstname.lastname@example.org to which you can send us all your questions. These will be read by the GLP UP/UPC Team, composed of specialized professionals deeply prepared on this new system and ready to contact you directly.
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