From 1 March, patent holders will have three months to apply for an early ‘opt-out’. This will allow them to avoid the exclusive jurisdiction of the Unified Patent Court (UPC).
The Unitary Patent (UP) is a system that will bring the possibility to get patent protection in up to 25 Member States with a single request to the European Patent Office (EPO). The patent will be granted by the EPO under the rules of the European Patent Convention (EPC). When a European patent is granted, patent holders will be able to request a unitary effect, getting a UP, which will grant them protection in up to 25 Member States (those which have validated the Agreement on a Unified Patent Court).
Two EU regulations provide the legal framework for the Unitary Patent system:
- EU Regulation No 1257/2012 creates a “European patent with unitary effect”, commonly referred to as “Unitary Patent”.
- EU Regulation No 1260/2012 lays down the translation arrangements for Unitary Patents.
Nowadays, you can protect your invention in Europe via national or European patent. The issue is that a granted European patent has to be validated and maintained individually in the countries that the applicant identified in the application. The process can be complex and expensive. With the UP, the complexity and expenses of national validation are removed because the main target of the UP is to reduce costs and requirements of validation.
Last 17th of February 2023, Germany ratified the Agreement on a Unified Patent Court, so the UP system is expected to start on June 1st. With this Agreement, the UPC will become operational and it will be the common Court for litigation disputes relating to Unitary Patents and European patents for which no ‘opt-out’ has been requested.
After the publication of the grant of a European Patent under the EPC, the “classic” European patent, the proprietor has one month to request unitary effect. A Unitary Patent can be obtained for any European patent application whose grant communication date is after 1 January 2023.
What is the “opt-out”?
The “opt-out” is the possibility for European patent holders or applicants to avoid the exclusive jurisdiction of the UPC by expressly requesting that their patents be excluded from the jurisdiction of the new Court. This will be possible as long as no third party has already filed an action with the UPC in respect of those patents. If the “opt-out” is exercised, national courts will remain competent for both infringement and validity.
However, this could be a problem since, immediately after the UPC Agreement enters into force, a third party could bring actions against the patent holder before the UPC before the patent holder has been able to exercise the “opt-out”. In this case, the UPC would be competent to decide on these actions, thus preventing the holder from exercising the so-called “opt-out”.
In order to avoid this situation, a period of three months has been established before the UPC Agreement enters into force, during which the patent holder can request the “opt-out” in advance. This is the so-called “sunrise period”, which started on 1 March 2023.
The possibility of exercising the “opt-out” will be maintained for a period of seven years (renewable for a further seven years) after the entry into force of the UPC Agreement.
It is not possible to file the “opt-out” with the EPO, it has to be filed with the UPC directly. The way to do it is by using the so-called Case Management System of the Unified Patent Court.
Finally, it should be remembered that the fact that countries, such as Spain or Croatia, are not currently parts of this system, because they have not ratified the UPC Agreement, does not prevent Spanish or Croatian legal or natural persons from applying for a UP or being part of related disputes before the UPC Agreement.
To have more info about the “opt-out” you can visit: https://www.unified-patent-court.org/en/registry/opt-out
- Publication date
- 13 April 2023
- European Innovation Council and SMEs Executive Agency