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UPC Update – July 2021

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The Unified Patent Court (UPC), if implemented, will provide a common international court for litigating European patents in participating EU Member States in relation to infringement and validity of both Unitary Patents and European patents, thereby providing a single procedure in place of possible parallel litigation.  Companion Unitary Patents (UPs), if implemented, will make it possible to obtain patent protection in up to 26 EU Member States by submitting a single request to the EPO, providing a simpler and more cost-effective procedure for applicants.

Although the UK will not participate in the UPC, all Forresters’ attorneys who are dual qualified as both UK & European Patent Attorneys will maintain rights of audience before the UPC as the treaties are presently written.

On 09 July 2021, the German Federal Constitutional Court (FCC) rejected applications for preliminary injunction restraining the German Federal President from ratifying the legislation to bring the UPC into German law.  The German FCC, as well as rejecting the applications for a preliminary injunction, stated that the principal proceedings are inadmissible, since the complainants failed to sufficiently assert and substantiate a possible violation of fundamental rights.  Following these developments, there are no remaining legal hurdles to German participation in the UPC.  A further two Signatory States need to agree to be bound by the Protocol on Provisional Application in order for the project to move into its final phase.

It was previously planned that there will be a seat of the central division in London.  Italy (specifically Milan), Ireland, and the Netherlands are rumoured to be vying for the seat of the central division previously planned for London.  It is rumoured that Milan may be “winning” at present.  An alternative proposal for all central division decisions to be taken in Munich and Paris, i.e. with no replacement of the London central division, is also rumoured to be under consideration.

There is also the question as to whether other states will want to participate at all in a UPC and Unified Patent system which doesn’t include the UK.  This is especially so in light of the UK patent litigation expertise which was due to form part of the UPC, in particular, through the involvement of UK judges both as adjudicators and as advisors to the UPC committees.

With the hurdle of the further German constitutional complaints overcome, the UPC and UP may continue to progress towards reality, with the most optimistic estimations being in late 2022 or early 2023.  For further information in relation to the UPC and UP, please contact Jack Gunning or your usual Forresters contact.