The European (EP) patent landscape will shift in 2023 with the launch of the unitary patent system, consisting of unitary patents and a Unitary Patent Court. All current EP patent right holders now have a decision with regard to existing EP applications and patents to participate in the unitary patent system or to opt out.

WHAT’S HAPPENING

Unitary patents provide patent protection in up to 25 EU member states by submitting a single request to the European Patent Office (EPO). For unitary patents, nothing changes in regard to the examination/pre-grant process as currently conducted by the EPO under the rules of the European Patent Convention (EPC). However, for currently granted and future granted EP patents, patentees will be able to request unitary effect, thereby getting a unitary patent which provides uniform patent protection in up to 25 EU member states.[1] This differs from the traditional EP patent that, after grant, serves as an independent national patent in those countries in which the EP patent is validated.

Further, under the unitary patent system, unitary patents will be enforced through a single proceeding at the Unitary Patent Court (UPC), with effect in all countries that have ratified the Unitary Patent Court Agreement. Similarly, opposition and invalidity actions taken at the UPC will have effect across all participating countries.

TIMING

It was initially anticipated that the unitary patent system would start on 1 April 2023,[2] and the sunrise period for registering opt-out decisions would run for three-months from 1 January 2023 to 1 April 2023. However, for technical reasons related to implementation, on 5 December 2023, the start of the sunrise period was postponed for two months, and will now will start on 1 March 2023 followed by the entry into force of the Unified Patent Court Agreement on 1 June 2023. See Postponement of UPC Sunrise Period.

ACTION REQUIRED BY ALL EP APPLICANTS AND PATENTEES

The default condition for current EP applications and granted EP patents is to be included in the unitary patent system—i.e., in the absence of action by EP applicants and patentees, the default is opting in. However, for EP published patent applications and granted EP patents, applicants and patentees can opt out of the unitary patent system during a sunrise period via a suitable filing at the EPO. Opting out effectively maintains the status quo—i.e., the EP patent remains subject only to national jurisdiction in the member states of the EPC.

While an opt out affects only courts that have jurisdiction to hear an infringement action, an opposition, or invalidity action, there are advantages and disadvantages to consider in making the opt-in or opt-out decision.

With postponement of the sunrise period, EP applicants and patentees have additional time to consider various aspects of an opt-out/opt-in decision, but there are still preliminary steps to be taken to position EP portfolios. These include the following:

• Coordinating with co-applicants, as an opt-out request will only be effective if all applicants agree to opt-out.
• Confirming the registered proprietorship for each application/patent, as only the registered proprietor(s) is authorized to take action on the opt-out decision. In this regard, even misspellings in the proprietorship of record may possibly have an adverse effect on an entity’s ability to file a proper opt-out decision.
• Evaluating strategic and cost considerations on participating in the unitary patent system, or opting out (for all or a portion of the EP patent portfolio).

[1] Currently, 17 members have ratified the Unitary Patent Court Agreement and are participating in the unitary patent system: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. Notable European countries not presently participating include the United Kingdom and Spain. Non-participating EU members may accede to the UPCA at any time.

[2] The formal start date of the unitary patent system will be four months after Germany deposits its ratified Unified Patent Court Agreement, which is expected on 1 January 2023.

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