A new dawn for European patents and patent litigation – 1 June 2023

Just as the UPC’s sunrise phase has ended, a new dawn is breaking for European patents and patent litigation.  After many years of anticipation, the Unified Patent Court (UPC) and a new “European patent with unitary effect” or “unitary patent” (UP) are now a reality.

The primary aim of the UPC is to provide a harmonised system of patent litigation, within a single set of proceedings, within the participating EU member states.  At present there are 17 EU MS who have ratified the UPC Agreement and will participate in the UP.  This is expected to rise to at least 18 EU MS in 2024 if Ireland’s UPC referendum is approved and could rise to 24 EU MS, or even to all EU MS should Spain, Poland and Croatia decide to sign up to the UPC Agreement.

From today, the UPC has exclusive jurisdiction over all European patents that have not been opted-out of its jurisdiction.  Patentees will be able to enforce their EP bundle or UP in a single action before the UPC and third-party challengers will be able to bring claims and counterclaims for revocation.  The UPC can also order provisional measures, including preliminary injunctions and seizure of evidence of infringement (saisie).  During a 7 year transitional phase, where EPs have not been opted-out both the UPC and the national patent courts can hear matters, which allows for a degree of forum shopping between the courts, as well as a possible resurgence of torpedo litigations.

Our expectation is that the first UPs will be granted on 7 June 2023 and create a unitary patent right across all 17 EU MS that have ratified the UPC Agreement currently (including Germany, France, Italy and The Netherlands).  These UPs will benefit from a single renewal fee, payable to the EPO that has been set to approximately the costs of validating an EP in 4 EU MS, which for some patentees will represent a significant saving.  The renewal fee must be paid in full each year and cannot be reduced by “dropping” coverage of certain UPC countries.  As with all EPs, the UP can be opposed as part of the EPO’s central opposition procedures (alongside any other EP nationals) within 9 months of grant.  The UP can only be enforced or centrally revoked in litigation before the UPC.

During the three-months leading up to the launch of the UPC, approximately 460,000 European patents and patent applications have been opted-out.  Provided no litigation has been launched before the UPC, applications to opt-out can be filed for at least the next 7 years.  We expect that many patentees will continue to file applications to opt-out before grant of the EP while watching how the UPC develops.  The opt-out will last for the lifetime of the EP unless it is withdrawn.  An application to withdraw the opt-out can be filed at any time during the lifetime of the EP unless there has been any national litigation (pending or concluded).

With a team of specialist European patent litigators, oppositions specialists and patent attorney teams who bring together an extensive depth of legal and technical knowledge, HGF is ideally placed to advise on the impact of the UPC on patent litigation, prosecution and licensing strategy.  For further information please contact upclitigation@hgf.com or speak to your usual HGF attorney.