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:

• AA Thornton: An introduction to the Unitary Patent and the UPC, including a video
• Appleyard Lees: An overview of the EU patent package
• Bird & Bird: The Unitary Patent and the Unified Patent Court, including an interactive map
• Bristows: Dedicated UPC website
• D Young & Co: UP & UPC Knowledge Bank, including on demand webinars
• Gowling: ‘Are you prepared for the new unified patent court system in Europe?’, on demand webinar
• J A Kemp: Unitary Patent and the Unified Patent Court
• Kilburn & Strode: Opting out – now’s the time to get prepared
• Marks & Clerk: Unitary Patent & Unified Patent Court 
• Powell Gilbert: The UPC
• Simmons & Simmons: UPC toolkit
• Withers & Rogers: Unitary Patent package

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