EU UPC agreement in process

On January 18, 2022, having recently joined the Protocol on a European Unified Patent Court (UPC) on Provisional Application (APP) as the decisive 13th EU Member State, Austria deposited its instrument of accession to APP. Thus, the countdown to the official opening of the UPC has now begun. (The actual opening could be in late 2022 or, more likely, early 2023.)

Austria’s deposition marked the start of the provisional application phase from January 19, 2022, which will last at least eight months and will include preparatory work, including the recruitment of 90 legal and technical judges and administrative staff, testing the records management system, setting up the IT system, hosting the inaugural meetings of the governing bodies and confirming the UPC budget. As Alexander Ramsay, Chairman of the UPC Preparatory Committee, stated in a press release issued on January 19, 2022, the provisional candidacy phase will begin with the inaugural meetings of the Administrative Committee, the Advisory Committee and the Budget Committee. In addition, following the withdrawal of the United Kingdom from the project, the Preparatory Committee must decide on the location of the UPC’s central division for pharmaceutical and chemical affairs, the headquarters of this division being initially planned in London.

As soon as the UPC member states are satisfied that preparations have progressed to the point where the UPC is functional, Germany will deposit its ratification of the UPC agreement. Germany’s filing will set the date for the start of UPC operations and trigger the countdown to the entry into force of the UPC agreement, which will be on the first day of the fourth month after the filing. At this stage, unitary patents (or European patents with unitary effect) will be available from the European Patent Office (EPO).

Once the provisional application phase is completed, a seven-year transition period is triggered for applicants and proprietors of European patents (EPs) to decide whether they wish to opt out of the jurisdiction of the JUB and continue to pursue litigation. national patents. During this transitional period, EP candidates can register if their application is successful or even after the EP has been granted, if no legal action has been taken in a national court.

The UPC will therefore be competent for already existing EPs (if they are not excluded) and for newly introduced unitary patents granted by the EPO. Nullity and infringement proceedings will be conducted before the UPC, which will include regional, national and central divisions as well as an appeal court and a mediation centre.

In a statement shared on January 19, 2022, EU Internal Market Commissioner Thierry Breton welcomed the start of the provisional application phase, highlighting the cost advantages of unitary patents: “For example, a unitary patent covering a territory of up to 25 Member States will cost less than €5,000 in renewal fees over 10 years, instead of the current level of around €29,000. The unitary patent will also reduce the gap between the cost of patent protection in Europe compared to the United States, Japan and other third countries. »

Practical note: Entities operating in the European Union should check whether their intellectual property strategy is adapted to the entry into force of the UPC and the availability of unitary patents.

Dominik Rissmann, intern at the Dasseldorf office, also contributed to this case note.

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