It’s time to prepare for a single European patent and UPC

Tim Powell, Partner at Powell Gilbert LLP and member of the BIA’s Intellectual Property Advisory Committee (IPAC), provides an update on latest progress towards a unitary patent (UP) and Unified Patent Court (UPC) in Europe and what this means for BIA members.

In November 2021, I published a guest blog on developments in the European project to grant unitary patents across participating EU Member States and to have a new court system where these rights and existing European patents could be enforced or challenged in a single proceeding: The Unified Patent Court (UPC) – now a real prospect.

The project is gathering pace and it now seems likely that the new court system together with the ability to obtain unitary patents will come into being in late 2022 or early 2023. In January, Austria deposited its ratification of the Protocol on the Provisional Application of the UPC Agreement, triggering the commencement of the Provisional Application Phase (PAP). This marks the final stage of preparations for the UPC to start operations and marks the birth of the UPC as an international organisation.

On 6 April, the UPC published an update on progress and a projected timeline. In summary, the inaugural meeting of the Administrative Committee of the UPC, which fulfils the role of non-judicial management of the UPC and ensures it is operational, was held on 22 February. The Administrative Committee of the court has now started to interview candidate judges and, once selected, training of these judges will begin. In parallel, the IT and case management systems of the court are being finalised. Once the Administrative Committee is confident that the court is operational, Germany will deposit its ratification of the UPC Agreement.  Three clear months later, the court will open for business.

The three-month period after German ratification is the so-called “sunrise period” during which owners of existing European patents may opt these patents out of the exclusive jurisdiction of the new court. This is an important decision as unless a patent is opted out, it may face central revocation proceedings in the new court, meaning the validity, ownership or scope of the patents could be challenged.  An opted-out patent may, however, be opted back into the system if the patent owner wishes to enforce the patent by bringing infringement proceedings in the UPC.

Although the sunrise period will not start until later this year, BIA members should be reviewing their patent portfolios now to determine their best options. This is particularly the case where members have in-licensed patents from third parties as it will be necessary to discuss with the third-party patentee whether they should elect to opt out.

The BIA’s IPAC will continue to update members on UPC developments. A number of IPAC member firms have published information on the UPC, which can be found here:

If you are a BIA member and host information on the UP and UPC on your website, including webinars and events, please contact [email protected] to be added to the list

 


More news and updates

BIA celebrates RQ BIO licencing agreement with AstraZeneca for monoclonal antibodies targeted at COVID-19

Today RQ BIO has announced a licencing agreement with AstraZeneca for its portfolio of early-stage monoclonal antibodies targeted against SARS-CoV-2, with the company also emerging from stealth mode on completion of the agreement. RQ Bio is a UK-based biotechnology company focused on developing treatments and preventative therapies based on potent broad-spectrum mAbs to address areas of unmet need in vulnerable patient populations.

CEO Update | 16 May 2022

Last week we gave our response to the Department of Work and Pensions consultation on facilitating investments in illiquid assets. We called on the UK Government to improve transparency in the pensions industry so that pension savers have access to diversified investment strategies benefiting from the wealth-creating opportunities of the UK’s innovative, venture capital-backed industries, including biotech and life sciences, while supporting issues the public care about, like better healthcare and a cleaner environment.

Give pension savers the opportunity to invest in the development of new medicines and a greener economy

The BioIndustry Association (BIA) has called on the UK Government to improve transparency in the pensions industry so that savers can make informed decisions on what their money is invested in.

CEO Update | 9 May 2022

Congratulations to Omass Therapeutics for raising $100 million in the Series B financing round, as well as two BIA member companies - Scotland-based EnteroBiotix and Solvemed group, who were featured in Forbes ‘30 under 30 Europe’ Science and Healthcare Edition for 2022. We are also glad to see engineering biology receive £20.6 million in investment from UK Research and Innovation (UKRI). Read more on IP TRIPS Waiver, update on Northern Ireland and BBSRC Business and Academia Prosperity Partnership.

 

More within