Guest blog: The Unified Patent Court (UPC) – now a real prospect

Tim Powell, Partner at Powell Gilbert LLP and member of the BIA’s Intellectual Property Advisory Committee (IPAC), talks about the Unified Patent Court becoming a real prospect in 2022.

The Unified Patent Court (UPC) is a ‘one-stop’ court for enforcement or revocation of patents across 24 Member States of the EU. It has been stalled for some time because of constitutional challenges in Germany but these have now been resolved, clearing the way for the court to open for business. It may now be operational in late 2022 at the earliest, although more likely in 2023.

This has implications for all BIA member companies, as the existence of the court will change the landscape of patent litigation across a large part of the EU. The UK, having originally signed the UPC Agreement, has withdrawn from the system in 2020 post-Brexit and so litigation of patents in the UK will be unaffected.

The next step towards the establishment of the court will be the start of the Provisional Application Period (PAP). One further Member State needs to ratify the protocol on the PAP before this can happen. This is likely to be Austria before the end of this year. The PAP marks the final stage of the court’s preparations. It enables the appointment and training of the judges and court officials, establishes the court budget and allows the court IT system to be finalised.

The commencement of the court system will coincide with the possibility of applying for a unitary patent that will be enforced through the UPC. However, the jurisdiction of the UPC is not limited to the unitary patent and will extend to existing European patents unless they are opted out of the system.  There will be a ‘sunrise period’ of three months before the court starts operation for patentees to opt out of the exclusive jurisdiction of the UPC and therefore protect these patents from cross-border revocation actions.  Patents may be opted back in later if a patentee decides to enforce in the UPC. It is therefore important for BIA member companies to consult with their IP advisers about the pros and cons of using the new unitary patent system for pending European patent applications and of opting out existing patent rights from the UPC jurisdiction.

More information on progress to the UPC can be found here, and detailed guidance on UPC for BIA members will be published on our website in 2022.