Significant Changes to the European Patent System Are Coming in 2023 – Here is What Canadian Applicants Need to Know
January 12, 2023
By Denis V. Keseris and Ellen Kiernan
2023 is set to be a monumental year for the European patent landscape. As we reported previously, ratification of the Unified Patent Court Agreement (UPCA) by Germany in December 2022 was originally expected to trigger the official 3-month “sunrise period” to start on January 1, 2023. While it was announced on December 5, 2022, that the start of the sunrise period is to be delayed by two months to March 1, 2023, the UPCA is still expected to come into force in 2023 (i.e., now June 1, 2023). With these imminent changes to the patent system in Europe, it is important for Canadian applicants and patent holders to understand the basics of the Unified Patent Court (UPC) and the Unitary Patent (UP) to choose the most appropriate means of patent protection for their business.
Where will the UPC and UP Apply?
The UPC and UP are initiatives of the European Union (EU) and only apply to countries that are both EU member states and have ratified the UPCA. In addition to the expected ratification by Germany, other EU countries that have ratified the UPCA include Belgium, Bulgaria, Denmark, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden.
Some notable countries that have not ratified the UPCA (i.e., non-UPC states) at the time of writing this article include Spain, Croatia, the Czech Republic, and Poland.
Finally, European Patent Organization (EPOrg) member states that are not part of the EU (i.e., non-EU states) cannot join the new system, including Albania, Iceland, Liechtenstein, Monaco, North Macedonia, Norway, San Marino, Serbia, Switzerland, Turkey, and the United Kingdom.
What is a Unitary Patent?
From a patent prosecution perspective, the UP is essentially a new option for validation in Europe. As such, prosecution of applications before the European Patent Office (EPO) will remain unchanged after the UPCA comes into force. Currently, once the EPO has granted a patent, patentees can validate their European Patent (EP) in one or more EPO member states within 3 months of the date of publication of grant. Once the UPCA comes into force, patentees will have an additional option to “register for unitary effect” within one month of the date of publication of grant. This will provide patentees with protection in all EU states that have ratified the UPCA at the time of registration for unitary effect. A patentee will also be able to combine these options, by registering for unitary effect and validating in non-EU/UPC states.
Registering for unitary effect creates a single, indivisible right. This means that if some UPC countries become less important for patent protection in future, they cannot be dropped to save costs. A discussion with your B&P advisor is recommended to determine whether registering for unitary effect is the right decision for your business.
The option to register for unitary effect will only be available for European patent applications that are both filed after March 1st, 2007, and have a Rule 71(3) EPC communication (notice of allowance) response deadline set on or after January 1, 2023.
Following the coming into force of the UPCA, there will be a seven-year “transitional period”. The UPCA allows for this transitional period to be extended a further seven years based on consultations with users, for a total of fourteen years. The aim of the transitional period is to give patentees an opportunity to opt out of the jurisdiction of the UPC until the new Court has established a consistent track record.
During the transitional period, a request for unitary effect must also include a translation of the application into English (if the application is filed in French or German) or into any other language of the EU (if the application is filed in English). No translations will be required after the transitional period.
What is the Unified Patent Court?
The UPC is an international patent litigation court of first and second instances. All European patents, including both UPs and conventional European Patents (EPs), can be litigated at the UPC. Decisions from the UPC will take effect broadly across all UP states (i.e., for a Unitary Patent), or all UPC states in which an EP has been validated (i.e., for traditional EP validations).
During the transitional period, EPs will fall within the jurisdiction of both the UPC and national courts, unless a patentee chooses to opt out of the jurisdiction of the UPC. Once a patentee opts out, they will have only one opportunity to opt back in. By opting out, the EP will no longer fall within the jurisdiction of the UPC for the entire lifetime of the patent (even after the transitional period ends). Opting out of the UPC is only available for patents that have never been litigated before the UPC or a national court and have not already been opted back in.
A patentee may opt out at any time after the start of the sunrise period (March 1, 2023) until the end of the transitional period. There is no official fee for registering an opt-out or an opt-back-in. Once the transitional period has ended, EP validations in UPC countries will join UPs as rights that fall within the exclusive jurisdiction of the UPC.
The UPC will provide a central litigation system for a large market, which could provide advantages regarding damages, licensing fees, contributory infringement, and other factors. This centralized system may significantly change a cost-benefit analysis of litigating in Europe. The UPC is currently, however, untested. There is essentially no case law on infringement, and the UPC creates a single point of failure for UPs and EP validations in UPC countries of non-opted out EPs. The decision of whether to opt out of the UPC (and if so, when) will therefore need to be part of a carefully considered strategy in Europe.
Finding Out More About Strategic Aspects of the New System
If you want to learn more about the UP and the UPC, please sign up for our upcoming webinar (here) during which we will discuss strategies for taking advantage of (or avoiding) this new system.
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