Osha Attorneys
Osha Attorneys
Osha Attorneys
Osha Attorneys
Attorney search
Search by

The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

Unified Patent Court Is Established

日本語    简体中文    繁體中文


The Unified Patent Court is now established.  Judges can now be hired and the sunrise period for opting out may start soon. 

Following Austria’s deposit of the ratification instrument concerning the Protocol to the Agreement on a Unified Patent Court (UPC) on provisional application (PPA) with the European Union (EU) Council, the PPA entered into force on January 19, 2022. The provisional application period necessary for establishing the UPC and preparing the opening thereof can therefore commence. This means that the UPC as a legal entity is established and that judges can be hired. This also means that the sunrise period for opting out may start in Summer 2022 and that the first European patents with unitary effect could be granted in late 2022 or early 2023.

According to the UPC Preparatory Committee, the preparations for opening the court, which include recruiting judges and staff, and taking financial and organizational steps, could last at least 8 months. As a result, the UPC could start at least 8 months from Austria’s deposit or a few months after, assuming that Germany, the 17th state to ratify the UPC Agreement, deposits its ratification instrument of the UPC Agreement. As known, both houses of the German parliament have authorized ratification, which will trigger a period of 4 months to the opening of the UPC. Germany has made clear that it intends to withhold giving notice of its ratification until the UPC Administrative Committee determines that preparations for opening the court can be completed within that time. Therefore, the first European patents with unitary effect could be granted in late 2022 or early 2023.

If the above assumption is correct, owners of European patents and applicants of European patent applications should make a decision as to which European patents and applications should be opted out from the exclusive competence of the UPC (which could revoke a patent across the whole UPC territory in a single action). The so-called sunrise period will allow opting out European patents and applications before the UPC becomes operational and, further assuming that the court opens in October 2022, could start from July 2022 and end before the actual opening of the court. Applicants should also review their filing strategies and adapt them to the fact that a new patent, the European patent with unitary effect, is soon expected to coexist with the classical European patent. Similarly, a new court is soon expected to coexist with national courts in Europe and render decisions on infringement and invalidity of both European patents with unitary effect and non-opted out European patents.

The new unitary patent system will initially come into effect in 17 EU states (i.e., Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden), and may subsequently come into effect in additional 7 EU states which have signed the UPC Agreement and may participate once they ratify it (i.e., Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia), depending on the time at which each of these 7 states proceeds to ratify the UPC Agreement. Ireland could be one of the first states to ratify the UPC Agreement, but it needs to hold a referendum, which is still to be organized. In principle, it cannot be ruled out that one or more of the remaining 3 states of the EU that for the time being do not participate in the system (i.e., Spain, Croatia, Poland), might change their mind and decide in the future to join the other EU participating states. Such a change, which would let the new unitary patent system cover all 27 EU member states, appears to be possible at least for Croatia, but not in the short term.

In view of the above, initially, applicants of European patents may obtain a unitary protection in said 17 EU states by filing a request for unitary effect and a translation of the patent specification into one language at the European Patent Office (EPO). The translation must be either a full translation into English where the patent is written in French or German, or a full translation into any other official language of the EU where the patent is written in English. These two actions have to be taken no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin. After a 6-year transitional period, extendable by an additional period of maximum 6 years, no translation will be necessary to obtain a European patent with unitary effect.

Any additional ratification of a new state will add this state to the territory for which unitary protection may be sought in any subsequent request, but will not add this state to a protection already obtained by a request filed before the additional ratification. In other words, the territorial scope after the registration of a European patent as European patent with unitary effect cannot be changed: this scope is determined by the number of states having ratified the UPC Agreement at the time at which the request for unitary effect is presented. As a consequence, delaying grant may be convenient for all European patent applications for which applicants envisage a broader territorial scope, at least in cases where new ratifications of one or more states of interest are expected to take place shortly or within a few months after the issuance of the communication of intention to grant pursuant to Rule 71(3) European Patent Convention (EPC). Moreover, the EPO has communicated that, in order to avoid that applicants miss opportunities to obtain unitary protection in a transitional phase, the EPO will provide the possibility for applicants to expressly request a delay in issuing the decision to grant a European patent after despatch of the communication of intention to grant pursuant Rule 71(3) EPC and before approving the text intended for grant. These requests for a delay of the grant will be allowed as of the date Germany deposits its instrument of ratification of the UPC Agreement. Close monitoring of the ratification processes is thus needed to make prompt decisions both in the short term and in the future.

In view of the deadline for requesting unitary effect, the decision of whether or not to obtain a European patent with unitary effect will have to be made shortly before the time at which owners are used to make the decision of whether or not and where to validate a European patent (the validation has to be made before the national offices, as usual, within three months after the date of publication of the mention of the grant in the European Patent Bulletin). The EPO has communicated that, during a transitional period, it will also allow early requests for unitary effect as of the date Germany deposits its instrument of ratification of the UPC Agreement, once a communication of intention to grant pursuant to Rule 71(3) EPC has been despatched. In order to obtain protection also in non-participating states, national validations of European patents will still have to be made both for all EU states of the EPC not having signed or ratified the UPC Agreement (i.e. , Spain, Croatia, Poland, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia) as well as for all non-EU states of the EPC, such as the UK, Norway, Switzerland and Turkey.

In case of patents written in English, since the full translation of the specification needed during the transitional period may be into any other official language of the EU, European patent owners could opt for an official language of any EU country not having signed or ratified the UPC Agreement and not being party of the London Agreement and use this translation also for obtaining protection in such a country by way of validation.

In a 7-year transitional period (extendable once by an additional period of 7 years), there will be a shared jurisdiction of the UPC and national courts both for infringement and invalidation actions. In the 7-year period, a flexible use of the new patent could be reasonable for most companies which desire to take benefit of the potential advantages of the new system while accepting the related risks of a central revocation for selected inventions only. A flexible use could involve a mixed approach including, on the one hand, requesting European patents with unitary effect and making specific validations in non-participating countries in some cases, and, on the other hand, opting-out European patents and validating them according to already established strategies in other cases.

After the 7-year transitional period, however, when opting out will no longer be available, European patents with unitary effects could play a more important role. Since in the long term the UPC will have exclusive jurisdiction on both European patents with unitary effect and European patents, an early use of European patents with unitary effect could represent a competitive advantage over users less inclined to change their patent strategies.