Germany - Unitary Patent
The entry into force of the Agreement on a Unified Patent Court (UPC) is to be expected for June 1, 2023, with the UPC opening its doors and starting to receive cases as from that date. The court is common to currently 17 EU member states.
The UPC will have exclusive jurisdiction for disputes relating to infringement and validity of new unitary patents. It will also have exclusive jurisdiction for classic European patents unless they have been "opted out" of the new court system. Opt-out is therefore a means by which patent holders can remove their European patents from the jurisdiction of the UPC.
Steps to opt-out a classic European patent or patent application can be taken as soon as the "sunrise period" for the new UPC system starts on March 1, 2023 and up to one month before the end of the transition period, which will commence from the date the UPC comes into force. The transition period will last at least seven years but can potentially be extended to 14 years. If opted out, the UPC will have no jurisdiction and the classic European patent would be subject to the exclusive jurisdiction of the national courts in question.
A proprietor of or an applicant for a European patent granted or applied for before the end of the transitional period will be able to opt out of the UPC's jurisdiction in respect of that European patent or application for the entire lifetime of the patent, unless an action has already been brought before the UPC. To do this, the patent proprietor or his representative will have to notify an opt-out to the Registry of the UPC. The opt-out will take effect upon its entry in the Register. It will be possible to withdraw such an opt-out at any time, unless an action has already been brought before a national court.
The opt-out once notified and registered takes effect for the entire European bundled patent for all contracting member states where this patent has been validated. There is no possibility to notify the opt-out separately for the relevant member states.
There are advantages and disadvantages to patents being subject to the UPC. For example, central litigation may mean reduced costs as compared to pursuing multiple actions across different European countries. On the other hand, the same centralisation brings with it the risk of a central revocation of a bundle of national patent rights derived from a European patent following a single validity challenge at the UPC.
It is the intention that actions filed with the UPC will be docketed strictly with the court rendering its judgment within 12 months of issue. This is significantly faster for infringement proceedings than many of the national patent courts in EU member states. This may be considered as an advantage or a disadvantage.
The decision whether to opt out your European patent depends on many different considerations. One principle might be that an opt-out makes sense especially for patents that are validated in very few countries or in countries with very efficient patent courts. On the other hand, if a litigation procedure is very unlikely, you might decide to take no action in this respect.
If you need more detailed information, please feel free to contact us.