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Looking ahead to the UPC and Unitary Patents

February 2022

On 19 January 2022, the Unified Patent Court’s (UPC) provisional application phase began. In the words of the UPC Preparatory Committee, this represented “the birth of the Unified Patent Court as an international organisation”.

The UPC’s Provisional Phase

The Provisional Phase allows all of the preparations for the start of the UPC to be completed. The governing bodies will be created and all secondary legislation, financial budgets and court management system (CMS) will be finalised. Most importantly, all of the Judges and Registry staff for the UPC will be interviewed, appointed and trained. The Preparatory Committee has indicated that the intention is to hire approximately 45 legally-qualified Judges, 50 technically-qualified Judges. There will also be approximately 50 other members of staff to support the Registry and local courts. They expect that the process of interviewing and appointing the Judges will take approximately six months, with training of Judges on the UPC’s legal framework and CMS taking place from July 2022 onwards. The Judges will also need to vote on who will be appointed as president of the court.

When will the UPC go live?

When the Preparatory Committee and all countries participating in the UPC are confident that preparations in the Provisional Phase have provided the foundations for the UPC to work effectively, German will deposit its ratification of the UPC Agreement. This will trigger the countdown to the UPC officially becoming operational, which will happen on the first day of the fourth month following Germany’s ratification (“Start Date”).

The Preparatory Committee have indicated that it anticipates that the Provisional Phase will last at least 8 months (19 August 2022). This would give an earliest Start Date for the UPC of 1 September 2022 (if Germany deposits its ratification in May 2022). Given the complexity of finalising preparations for a brand new, multi-jurisdictional court, however, most commentators consider that a 1 December 2022 (deposit August 2022) or 1 January 2023 (deposit September 2022) are more realistic Start Dates.

On the Start Date, the UPCA will come fully into effect and the associated EU Regulations (Regulations (EU) No. 1257/2012 and No. 1260/2012) will apply. The EPO Rules relating to the Unitary Patent Protection will also enter into force.

Impact of the German Ratification

The date of deposit of the German ratification is also important for a number of pre-launch “Sunrise” periods associated with the UPC and unitary patent protection.

The Opt-Out Sunrise Period

The opt-out sunrise period it expected to start three-months before the UPC Start Date, i.e., one-month after Germany deposits its ratification. This allows the proprietor(s) of European patents and patent applications, to take those patents out of the exclusive jurisdiction of the UPC. The opt-out can last for the lifetime of the patent and applies to all of the EP designations that are valid and in-force in the participating UPC countries.

As the opt-out only takes effect from the date entered onto the Opt-Out Register, the Sunrise Period allows patentees to file the opt-out request and correct any deficiencies flagged by the Registry.

The Unitary Patent Sunrise Period

In order to encourage early uptake of the European patent with unitary effect or “Unitary Patent” (UP), the EPO has announced two options that will allow European patent applicants to either delay grant of a patent application to take advantage of designating a UP or to make an early request for an EP(UP). These options are only available from the date that Germany deposits its ratifications and only where the EPO has despatched its Rule 71(3) communication (the intention to grant letter).

1. Early request for unitary effect

The EPO’s first transitional measure will enable applicants to file early requests for unitary effect, together with the requirements for the registration of unitary effect, up to four-months before the start of the UPC. When the UPC comes into force, the EPO will register the UP from the Start Date.

The timing of filing the request will be important because if an early request for unitary effect is filed before Germany deposits its instrument of ratification of the UPCA and/or if a Rule 71(3) communication has not been despatched, it will not be treated as a valid request for unitary effect.

 

2. Request for a delay in issuing the decisions to grant a European patent

The EPO’s second transitional measure will allow applicants to request a delay in issuing the decision to grant of a European patent after a Rule 71(3) communication is issued and before approving the text intended for grant. The EPO will delay the mention of the grant of the European patent so that it is published in the European Patent Bulletin on or immediately after the UPC Start Date. The patentee then has a one-month deadline to file a request for unitary patent protection, together with the with the requirements for the registration of unitary effect.

This measure ensures that applicants do not miss the opportunity to obtain a UP but allows them to defer the decision about making the request until after the UPC Start Date.

This update was prepared by HGF’s Partner & Head of Law Rachel Fetches.

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