European update: Unitary Patents and The Unified Patent Court – Proposed new system for Europe

“Are your ducks in a row for the UPC?”

A new option is to become available to patent owners in Europe, proposed to start later this year but now highly unlikely to happen before Spring 2018. The delay is attributable to the dissolution of the UK Parliament and the political processes caused by UK general election on June 8th.

When the Unitary Patent and the Unified Patent Court (UPC) system does become available, this new option will allow the granting of a European Patent with Unitary effect (a so-called “Unitary Patent”) which will be a single patent right covering, eventually, up to 26 of the 28 European Union (EU) Member States.

It is important to understand that this represents an additional option to what is currently available and is not intended to replace the current, traditional “bundle” European patent which requires national validation in the countries where the patent proprietor wishes to bring a granted European patent into force.  Of course, the option of filing nationally and prosecuting separate national patent applications in multiple jurisdictions also remains.

What will be different is the way in which patents can be enforced in Europe because under the proposed new system, after a transitional period of at least 7 years, all patents that are granted by the European Patent Office (EPO), will come under the automatic jurisdiction of the soon-to-be formed, Unified Patent Court (UPC). The UPC will be an entirely new transnational court, including a Court of First Instance and a Court of Appeals, which will take the place of national courts in Europe on all questions concerning infringement and validity of patents granted by the European Patent Office, unless, during either the “Sunrise” period that will run for 3 months prior to the start of the new system, patent owners take specific action to “opt out” their pre-existing European patents, or  during the seven year transitional period, patent owners “opt out” their traditional “bundle” granted European patents, from the jurisdiction of the UPC.

upc outline

The implementing UPC Agreement was expected to come into force on December 1st 2017 despite the fact that on March 29th, the UK Prime Minister, Theresa May, triggered the Brexit process whereby the United Kingdom (UK) will leave the European Union (EU). The timeline to the start date of the new UPC system was subject to the proviso that the United Kingdom and Germany, which are the last two of the three mandatory countries required to ratify the UPC Agreement, would have ratified the Agreement before the end of August 2017. The UK general election on June 8th is likely to delay the commencement of the Unitary Patent and UPC, to at least Spring 2018. However, in our view, the UK will ultimately have to leave the Unitary Patent and UPC system when the UK formally exits the EU in March 2019. Stay tuned for our updates…..

We will keep you up to date on aspects of the new system and the timeline to its start date, on our UP and UPC blog

Marie Walsh and Elizabeth Jennings

May 16th 2017

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