The Unified Patent Court and the Unitary Patent – a quick recap and what happens now?
The legislation regarding the Unified Patent Court (“UPC”) and the Unitary Patent was signed by the German Federal President on August 7th 2021. Since Germany is a key country for the entry into force of the Unitary Patent, this ratification is a significant step on the journey towards the new system.
A provisional application period will commence once the Protocol on Provisional Application (“PPA”) has been deposited with the Council of the European Union, and after two more UPC member states have signed the PPA. This period allows for instance for the final recruitment of judges to take place, and for making final decisions on both organisational and practical matters of the UPC, as well as setting up the IT system needed for the unitary system.
Germany then also needs to deposit the legislation relating to the UPC Agreement, and when this is done, the UPC will be ready to open after 4 months. By the UPC Agreement, a unified patent jurisdiction is established covering all the Member States that have ratified the Agreement.
The Unitary Patent Protection (UPP), will allow, once the system is fully operational, for unitary effect of a European patent (“EP”: i.e. granted by the European patent office “EPO”,) in 24 Member states by one single request. Today, a Patentee must validated the classical EP with each of the national offices of the EPC member states (currently 38 states) of interest, which can be both costly and time consuming. However, the unitary effect of an EP will only cover the territories of those Member States that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. A single renewal fee will be paid to the EPO, and the fee level is set to be similar to four renewal fees as for a classical EP.
The UPC will be a court common to the Contracting Member states, and be a part of their judicial system. It will consist of a court of First instance (divided into local, regional and central divisions), a Court of Appeal and a Registry. The UPC will have exclusive jurisdiction and competence* in respect of civil litigation on matters relating to both classical EPs and the European patents with unitary effect, as well as supplementary protection certificates issued for a product covered by such a patent and European patent applications.
The central divisions, handling disputes based on different IPC classifications, will be located in Paris and Munich and in one other member state, possibly Milan (since the UK has withdrawn). Local divisions will be set up in different countries, such as Austria, Belgium, Denmark, France, Italy, Ireland and the Netherlands. Germany will possibly host four local divisions in Düsseldorf, Mannheim, Munich and Hamburg. Sweden, Estonia, Latvia and Lithuania will have a Nordic-Baltic regional division where the language will be English. Other countries are contemplating either setting up local or regional divisions, or go directly for the central division.
A patent mediation and arbitration centre with seats in Ljubljana and Lisbon has also been established, and it is one aim of the UPC to encourage parties to use this way of solving disputes.
The central divisions will handle all revocation actions and declarations for non-infringement, in the language in which the European patent was granted, and the local and regional divisions will handle, amongst other cases, infringement actions, in view of the place where the infringement took place or the defendant’s seat. However, an invalidity action may also be brought before the local or regional divisions as a counterclaim to a pending infringement action. The local and regional courts may decide on their own which languages that can be used before the court. The Court of Appeal will be always use the language of proceedings used at the first instance. The proceedings before the UPC are governed by the UPCA and by the Rules of Procedure, giving more detail to these proceedings.
The proceedings of the Court of First Instance will consist of a written, an interim and an oral procedure, and there is an explicit aim of the UPC to hold a final hearing within one year of filing the complaint. This means that any part to the proceedings must be well prepared at each instance of the proceedings, as well as being well acquainted with the IT system to be used for all written submissions.
*Since the UPC by default will have exclusive jurisdiction and competence also for classic European patents, once the UPP and the UPC/UPCA has entered into force, there will be a transitional period for seven years, where the patent proprietor may “opt-out” of this exclusive competence of the UPC. If the opt-out is declared, the UPC will not have jurisdiction to handle cases regarding the infringement and/or validity of that patent, lasting for the entire lifetime of the respective patent. (The proprietor may, however, “opt-in”, unless national proceedings have begun, and may, similarly, not opt-out if UPC proceedings have begun.) This exclusive jurisdiction has been called out as “putting all eggs in one basket”, since the revocation of the patent in UPC means that it is revoked for all the Member states. However and similarly, infringement disputes and enforcement thereof is also obtained for all the Member states by one ruling of the UPC.
In conclusion, the short answer to “what happens now”, is “not that much” – at least until the Preparatory Committee sets out the time line for the Provisional Application Phase – which will then leave all Patent holders, and other parties involved with about 6 months to really prepare for the new patent system.
If the UPC does enter into force, we at Ström & Gulliksson, as well as Advokatbyrån Gulliksson, together with colleagues at the location of the different European local and central courts, will stand fully prepared to assist our clients with all matters before the UPC.