Unified Patent Court to open doors and unitary patents to be available from 1 April 2023 and opt-outs from 1 January 2023

It's all systems go it seems for the UPC. The Rules of Procedure of the new court came into force in September and now the UPC's Administrative Committee has confirmed its timetable leading up to the start of the new court and the availability of unitary patents as well as the start date for the opt-out sunrise period.

The UPC Administrative Committee has issued its own roadmap under the heading "latest state of play" depicting the key activities and milestones leading up to the start of the Unified Patent Court (UPC) on 1 April 2023.  The timetable sets the likely date for Germany to deposit its ratification of the UPC Agreement as sometime between 19-23 December 2022, allowing the opt-out sunrise period (during which European patents can be opted out of the jurisdiction of the UPC in advance of its commencement) to start on 1 January 2023. So far 16 other states have deposited their instruments of ratification, so there will be 17 states (including France, Germany, Italy, and the Netherlands) participating in the UPC and unitary patent system from 1 April 2023, although more may deposit in the run-up to the start of the court. One of those that have ratified and not deposited is Ireland which requires a national referendum to approve its ratification.

Unitary patents: Unitary patents, otherwise known as European patents with unitary effect, (UPs) will become available as soon as the new court commences. These will provide a single patent right across all participating EU member states.  Unitary patent status will be limited to the states participating at the time that status is granted and will not expand when new states join the system. To read more on the unitary patent and patent strategies under the new system see our UPC and unitary patent hub.

Opt-out: Under the new system, all European patents that are not opted out will also become subject to the UPC's jurisdiction (with its powers of pan-EU enforcement but also revocation of multiple EP designations in one go). Patent holders who have not considered whether to opt out their patents as yet, should start doing so now in order to be ready to submit opt-out applications during the sunrise period and so prevent any actions being brought at the UPC in respect of those patents by competitors or others from day 1 of the UPC, for example in the form of revocation actions or applications for declarations of non-infringement.  Opt-outs can be withdrawn subsequently if patentees decide later to use the UPC for enforcement, but only if proceedings have not been commenced in national courts by that time. Further, although opting out is also available to patentees once the UPC has started (if not done within the sunrise period), if an action is brought in the UPC in relation to that patent this will prevent an opt-out application being made in future.

Licensing: Thus where proceedings are commenced is key for keeping control over the jurisdictions in which a patent could be enforced in future and businesses should review their licences-out for control of proceedings as well as having discussions with their licensees over opt-out choices. This also applies to licences-in of course.  For a discussion of how opt-out works and factors that might influence opt-out see our UPC and UP hub.

Rules of Procedure finalised and in force: As we reported in our blog post here, on 1 September 2023 the final consolidated version of the UPC Rules of Procedure came into force.  Amendments to the previous draft had been released by the UPC Administrative Committee, in tracked changes form, in July. The UPC Committee issued a consolidated version of the UPC Rules of Procedure following the approval of final changes to the draft. One of the most significant changes is to opt-out procedures, with new procedures introduced to deal with unauthorised opt-out of patents from the UPC's jurisdiction or withdrawal of opt-out. Others deal with access to pleadings and confidentiality provisions as well as the use of videoconferencing for hearings. For full details see our earlier blog post here. Most of these changes have been made to bring the procedure up to date, allowing for the more online nature of court interactions post-pandemic, or where the opportunity to consider the rules in a more practical context has arisen and gaps have become apparent.

Regional and local divisions confirmed: The UPC Administration Committee has also confirmed the location of the various local and regional divisions of the UPC. While all other participating states will have one local court (or participate in the Nordic-Baltic regional division announced), Germany will have three local division courts: Dusseldorf, Hamburg and Mannheim. For more on this development, see our blog post here.

Mediation and Arbitration: The UPC Mediation and Arbitration – rules and objectives, have also been published (see our blog post here).

Find more about how the UPC will work, and other recent developments on the system on our UPC Hub www.hsf.com/upc.

Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues which you should be considering in preparation for the UPC – please contact us for further information.

Key Contacts

[show_profile name="Frederic" surname="Chevallier" jobtitle="Partner, France" phone="+33 1 5357 1360"]