Seven steps to UPC readiness

The Unified Patent Court (UPC) could be open for the filing of its first case as early as 1 October 2022, with the filing of European patent opt-outs beginning as early as 1 July 2022. While this timing is currently speculative, it emphasises the need for patentees, and those who compete with them in the same industry space, to take certain actions in readiness for the UPC, and with it the Unitary Patent.

Here, we identify seven key areas of consideration and action:

What European patents should I convert to Unitary Patents?

Unitary Patents cover all the countries that are participating in the Unified Patent Court and may therefore be enforced or revoked for all those countries in one action. Consideration should therefore be given to which bundles of European patents, if any, to convert into European Patents with Unitary Effect (Unitary Patents), depending on their relative strengths and weaknesses and their commercial value. For each bundle of European Patents with the same set of claims, conversion to a Unitary Patent is requested no later than one month from grant and covers those countries that have ratified the UPC Agreement only (countries that have not ratified will be protected by any equivalent European patent in the granted bundle regardless of whether they later ratify the UPC Agreement).

The grant of applications may also be delayed until after the UPC opens, if necessary, in order to enable conversion to a Unitary Patent. Requests for Unitary status of patents that will be granted after the UPC opens may be made to the EPO as soon as Germany deposits its instrument of ratification of the UPC Agreement (expected to be approximately three months before the UPC opens, and possibly as early as 1 July 2022). 

Monitoring competitor Unitary Patents

The EPO register should be monitored to see which competitor patents have been converted to Unitary status in case of any infringement and UPC enforcement risk in future.

What European patents should I opt-out of the UPC?

Even if not converted to Unitary Patents, all European patents in a bundle that are designated for the participating countries of the Unified Patent Court may be enforced or revoked for all those countries in one action. Consideration should therefore be given to which European patents will be opted-out of the UPC, again depending on their relative strengths and weaknesses and their commercial value. It will be possible to start opting-out of European patents from the UPC at the UPC Registry during a 'sunrise period' prior to the opening of the UPC. This has the effect of removing European patents (the whole bundle registered in UPC participating countries) from the possibility of offensive or defensive actions in the UPC, making only national court actions possible. Opt-out can be withdrawn later, but only if a national action against any one of the patents in the European has not been started.

Who can authorise opt-out?

The opt-out can only be authorised by the proprietor of the patent. The permission of licensees is not required. Therefore, licensees should seek to agree with the proprietors of licensed patents the right to participate in opt-out (and later withdrawal of opt-out) decisions. 

Who can opt-out supplementary protection certificates (SPCs)?

The opt-out of a European patent automatically includes any SPC based on it. If the holder of the SPC is different to the patent proprietor, their permission should also be sought to opt-out.

Monitoring the UPC Registry

As soon as it is open, the online UPC Registry should be monitored to see what competitor patents and SPCs (if any) have been opted-out of the UPC.

Consider filing divisional applications

Divisional patents are treated as separate patents for the purpose of conversion to Unitary Patents and opt-out. Therefore, where divisional patents are possible, the risks associated with central enforcement and/or revocation in the UPC may be spread by treating divisionals differently to parents for the purpose of conversion to Unitary Patents and opt-out.

Please visit our UPC webpage where you will find more information about our capabilities and expertise on the UPC and Unitary Patent and contact details for our experts.