The agreement to create the Unified Patent Court, an international court established by the EU to address infringement, was signed in 2013. Nearly a decade later, the new court is planning to open its doors on April 1, 2023.
Such a definitive declaration is a landmark moment for a system that has been discussed in principle by EU countries since the 1960s, and is now within reach.
Currently, patents are enforced individually in each EU member state, and each country has its own body of law. The UPC will migrate the cases from a patchwork system to a consistent framework. This is a sea change from a complicated and costly system to a more streamlined, cost-effective single body of law. But the new system also brings risks.
There are two new components—the UPC and the Unitary Patent. Once the UPC goes live, it will be possible to centrally pursue suspected patent infringers to obtain judgments that are directly enforceable in the block of EU states that have signed up to the new system.
The UP will cover the same group of EU states and be obtainable via an attachment to the long-established European patent application process, which will otherwise remain unchanged.
Much has been said about the opportunities and risks associated with this new system. It is widely expected to offer a useful weapon in the armory of the savvy patent strategist, and many are now gearing up to take action.
Impact on Innovators
The new system will significantly reduce costs for innovators who seek protection in more than a handful of EU states. They will no longer have to take parallel action in multiple countries. Likewise, where disputes and patent infringement are an issue, the claimant will only need to commence infringement proceedings in a single court to obtain a single pan-European injunction—preliminary or final—across several countries.
This will fundamentally change the way patent owners can use existing and future patents in Europe, because differing decisions around the validity of a European patent by national courts can create barriers to trade within the EU. The UP and UPC have been specifically created to remove such barriers by providing judgments that work across the borders of member states.
To complement this, the EU is discussing how to generate a pan-European supplementary protection certificate right—similar to the UP right—to be introduced shortly.
However, the new system brings risks.
Patents will be exposed to the jurisdiction of a newly established court operating under new rules, and the outcome of proceedings may therefore be difficult to predict. Patents falling under UPC jurisdiction will also be vulnerable to central attack. This might not sit comfortably with some owners while the fledgling system is finding its way.
That is not just an issue for those who plan to obtain UPs. The UPC will not only have jurisdiction over UPs, but also over European patents that have been granted under the existing system.
Luckily, patent owners will have the same ability to opt their patents out of the UPC jurisdiction during a three-month “sunrise” period which is expected to start at the beginning of January 2023.
Industries that traditionally pursue infringement actions in multiple European jurisdictions may, in principle, welcome the availability of central infringement actions. However, it remains to be seen whether those with particularly high value patents, such as pharmaceutical patents, will subject them to UPC jurisdiction.
Although April 1 might seem some way off, current and prospective patent owners need to start thinking now about the effects–and associated costs. And it is critical they consider opting their patents out of the system if they haven’t already.
Preparing for these changes could be time-consuming for owners of large portfolios, as the opt-out rules will require potentially extensive due diligence to ensure things are done correctly.
While much remains unclear, the much-anticipated package is set to transform the way that patents are handled for the foreseeable future.
This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.
Simon Mounteney is managing partner, Europe, at Marks & Clerk. He has over 30 years’ experience working in intellectual property and advises on IP portfolio management and patent strategy, with many clients undertaking multinational patent filing programs.