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UP and UPC update

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After several delays, the UPC agreement came into force on 1 June 2023.

The European Patent Office is now granting Unitary Patents and we are now in the seven-year transitional period where non-opted out European patents validated in UPC-member states can be enforced and challenged before the national courts of the Unified Patent Court (UPC).

The transitional period and opting out

During the transitional period, owners of non-opted-out patents that are validated in UP-member states can choose to bring an infringement action against competitors in either court structure. Conversely, competitors can choose to bring a revocation action against patent holders in either court structure. Once an action is brought in a particular court structure, a patent is locked into this court structure for the remainder of the patent term.

If an action is brought before the UPC, the decision of the UPC will be enforced in all UP-member states. Thus, infringement relief can be granted in respect of all UP-member states and the patent can be revoked in all UP-member states.

To eliminate the UPC from having a role in litigation, patent holders can opt out their patents from the jurisdiction of the UPC. Once the opt-out is registered, the jurisdiction of the UPC is removed for European patents granted in UP-member states meaning that, at least while the opt-out is active, actions can only be filed before the national courts. An opt-out can be withdrawn, but this is irreversible.

We recommend, in general, that granted patents should be opted out because being in the new court system brings no benefit in terms of renewal costs and the UPC court is untested. Key patents should almost certainly be opted out, whereas patents that are unlikely to be enforced or challenged present a lower risk. Likewise, the risk is lower if the patent is only in force in a small number of participating countries. Please note also that if a patent is initially opted out, it can later be opted in again (on one occasion) if you wish to enforce it centrally at the Unified Patent Court. If you have not opted out your patents and would like to, please contact your usual Forresters attorney as soon as possible.

Forresters’ opt-out watch service

We have set up a watch service that allows patentees to monitor the UPC opt-out status of their competitors’ European patents. For example, if a problematic competitor patent is past the nine-month EPO opposition window, but has not been opted out, a revocation action could be filed before the UPC to potentially revoke this patent in all UPC-member states providing freedom to operate in a number of countries via a single revocation action.

Please contact your usual Forresters attorney if this service is of interest to you.

Unitary SPC

Currently, unitary patent proprietors will still need to apply for an SPC on a country-by-country basis to obtain patent term extension in the form of Supplementary Protection Certificates (SPCs).

As previously reported, the European Commission was considering a unified process for the granting of SPCs in light of the unitary patent. Recently, the European Commission has proposed amendments to the existing EU regulations relating to obtaining SPCs for medicinal and plant protection products. These proposed amendments include introducing:

  1. a centralised national SPC grant procedure;
  2. a unitary SPC; and
  3. a combination of both 1 and 2 so that a unitary SPC can be obtained in states where the product is protected by the unitary patent and so that national SPCs can be obtained in states not participating in the Unitary Patent system.

If approved, this will likely harmonise the SPC grant procedure and will hopefully streamline the prosecution of SPC applications and reduce the associated costs. Forresters’ SPC experts are monitoring the situation closely.

If you require further information, please contact Forresters’ UPC team or your regular Forresters attorney.

Dr Ryan Mitchell