Streamline infringement and validity disputes across different EU Member States

On 20 July 2020, the UK officially withdrew from the proposed Unified Patent Court (UPC) system. In a parliamentary written statement in the House of Commons, it was explained that “In view of the UK’s withdrawal from the EU, the UK no longer wishes to be a party to the UPC system. Participating in a court that applies EU law and is bound by the CJEU would be inconsistent with the UK Government’s aims of becoming a self-governing nation”.

Following Brexit, the UK’s withdrawal from the UPC system was inevitable. To many UK proponents of the UPC, however, this withdrawal is nonetheless a disappointment – not least because, under the UPC Agreement (UPCA), a Central Division of the UPC’s Court of First Instance was to be based in London, with a focus on chemical and life science (CLS) disputes.

Despite the setback of the UK being one of the initial signatories to the UPCA and, in particular, the need to find another home for the “CLS” Central Division intended for London, the remaining 24 EU Member States who signed the UPCA back in February 2013 appear to be pressing on. Germany is leading the way (after overcoming multiple internal constitutional complaints) by recently ratifying the Protocol on the Provisional Application of UPC Agreement (PPA), reported here.

The PPA paves the way for the UPC and, with Slovenia providing a further ratification of the PPA on 15 October 2021, only one more ratification is required in order to enter the final phase for the set-up of the UPC. The remaining ratification is expected to follow shortly, which could easily be provided by Austria, Malta or Portugal, for example. However, deciding where now to locate the “CLS” Central Division may well cause a further delay, as it has done in the past.

Indeed, shortly after the UK’s formal withdrawal, Italy proposed Milan as the new host of the “CLS” Central Division, while the Netherlands is also keen to establish itself as key player in the UPC. Other EU Member States may well show an interest, too, so no doubt there will be further negotiations before a final decision is made.

The above circumstances notwithstanding, the UPC Preparatory Committee has estimated that the unitary patent and the Unified Patent Court are expected to come into force in the near future – perhaps as early as mid-2022. Once in force, all users of the European patent system will be required to make some important decisions regarding their European patent applications and European patents.

Under the existing regional patent system in Europe, a European patent can be converted into a bundle of national patents with a central application procedure at the European Patent Office (EPO). Upon grant of the application by the EPO, it is necessary to validate a patent in all of the EPC states where protection is required. This system will continue to be possible once the unitary patent comes into effect.

The unitary patent will be a single patent that provides protection in all participating EU member states (currently only excluding Spain, Croatia and Poland). Applicants will be able to choose to have a single unitary patent effective in all of these states instead of a bundle of national patents.

The UPC will be a forum for central litigation of a unitary patent and European patent attorneys (including attorneys from GJE) will be able to act before the court. The UPC will also have jurisdiction over traditional European patents that are not opted out of the court. This means the UPC will replace national courts as the competent forum for hearing revocation and infringement actions on European patents that are in force in the participating countries (all EU member states except for Spain, Croatia and Poland). The UPC’s jurisdiction also extends to SPCs based on European patents and unitary patents as well, although the exact provisions surrounding SPCs are yet to be finalised.

It will not be possible to opt out unitary patents from the jurisdiction of the UPC. However, for traditional European patents there will be a transitional period of at least seven years during which patents can be opted out of the jurisdiction of the UPC. Our Unitary Patent Team is here to help you navigate new decisions that will need to be made regarding unitary patent and UPC procedure. In particular, once we know when this new system will come into effect we can help guide you in making initial decisions about whether to opt existing patents out of the UPC, and whether to obtain unitary patents, in place of the traditional bundle of national patents.

Changes are happening quickly in this area so please check our website regularly for the latest developments.