Information on the Forthcoming Launch of the Sunrise Period and Start of the Unitary Patent and Unitary Patent Court
Germany, the 17th state to ratify the Unified Patent Court (UPC) Agreement and the last mandatory state for this agreement to enter into force, has deposited its ratification instrument of the UPC on February 17, 2023. This deposit triggers June 1, 2023 as date of entry into force of the UPC Agreement, which in turns triggers March 1, 2023 as starting date of the so called “sunrise period” for opting out European patents and applications from the jurisdiction of the UPC and June 1, 2023 as starting date for requesting unitary patents and for the UPC to become operational.
March 1, 2023: start of the sunrise period
From March 1, 2023, owners of European patents/applications will have the possibility of opting out them from the exclusive jurisdiction of the UPC, thus protecting their European patents rights from a central revocation across the whole UPC territory in a single action, which any competitor is allowed to lodge from June 1, 2023. The possibility of opting out will be available until one month before the end of the transitional period (expected to be at least seven years), i.e., at least until May 1, 2030. To avoid any central revocation, however, opting out must be filed before June 1, 2023. After the 7-year transitional period, no opting out will be possible: at that point, the UPC will be competent to hear cases not only on unitary patents (as during the transitional period), but also on all validated European patents.
June 1, 2023: requests for unitary effect
It is already possible, since January 1, 2023, and thus ahead of the entry into force of the UPC Agreement, to file with the European Patent Office (EPO) an early request for unitary effect (as a transitional measure) once a communication of intention to grant pursuant to Rule 71(3) EPC has been dispatched and, at the latest, on the date that the text for grant is approved by responding to that communication. If the requirements for registration of unitary effect are met, the EPO registers unitary effect once the unitary patent system has started.
From June 1, 2023, however, ‘regular’ requests for unitary effect (as a permanent measure) will start to be available for the first time. These requests have to be filed no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin, which is reported in the decision to grant, and are available for European patents granted on or after June 1, 2023. Since the European Patent Bulletin is published every Wednesday, the first European patents for which a unitary effect may be requested will be in practice those granted on Wednesday, June 7, 2023.
Be it an early request or a request filed from June 2023, the request for unitary effect has to be accompanied by a translation of the European patent. The translation is expected to be required at least for a period of 6 years, i.e., at least until June 1, 2029. It has to be noted that the translation accompanying the request for unitary effect is conceived for information only and does not have any legal effect.
In particular, where the language of the patent is French or German, the specification of the European patent has to be translated into English, whereas where the language of the patent is English, the specification has to be translated into any other official language of a state member of the European Union (EU). Applicants using French or German as language of the European proceedings may have a translation ready to be filed or merely needing a few revisions whenever they have also filed a foreign counterpart in a country having English as official language, such as the United States. On the other hand, applicants using English as language of the European proceedings may either have a useful text if they have filed an application in any country of Latin America or may for example prepare a translation into Spanish. Indeed, a translation into Spanish could be conveniently used to validate the European patent in Spain, a country that does not participate to the UPC. This means that for owners having this type of portfolio, provided they are inclined to accept the risk of a central revocation of their European patents, a unitary patent could involve either no translation costs at all or low translation costs from the very beginning, even during the 6-year period in which a translation is required.
From a pure cost perspective, when compared to a European patent validated in at least 4 countries, a unitary patent could be a valuable option, given that the single renewal fee of a unitary patent amounts to the renewal fees of the top 4 countries where a traditional European patent is granted (Germany, France, The Netherlands and UK). Since the initial UPC participating states are 17, whereas the European Patent Convention covers 39 states, unitary patents are expected to coexist with European patents. Needless to say, validation of European patents by the 3-month deadline from grant will be the only route to cover non-participating countries. 22 countries do not participate to the UPC system, either because they are non-EU countries, such as for example the UK, Switzerland, Turkey, and Norway, or because they are EU countries that have not signed or ratified the UPC Agreement, such as for example Poland, Spain or Ireland.
June 1, 2023: start of operation of the UPC
From June 1, 2023, the UPC, composed of its Central Division in Paris and its Local and Regional Divisions in other participating states, will become operational. Accordingly, among others, infringement and revocation actions (including in form of counterclaim) relating to both non-opted out European patents and unitary patents may be lodged with the UPC starting from this date. Also, protective letters and actions for a declaration of non-infringement will be available to any party involved in or anticipating a possible or actual infringement dispute.
A patent owner can decide where to start an infringement claim based on the member state where the infringement has taken place or based on the member state where the defendant has its domicile or its principal place of business, which gives the owner the choice among different Local or Regional Divisions. In case of counterclaim for revocation, different options are available to the Division, i.e., proceed with both the infringement action and counterclaim for revocation, refer the counterclaim for decision to the Central Division and suspend or proceed with the infringement action, or, with the agreement of the parties, refer the case for decision to the Central Division. Also, parties may in general agree to bring an action before the Division of their choice. Parties that want to lodge a revocation action or an action for a declaration of non-infringement have to lodge it before the Central Division, and thus either in Paris or in the section located in Munich (or any additional section of the Central Division replacing London after Brexit), depending on the subject matter of the patent.
The proceedings before the UPC involve tight deadlines and require parties to gather evidence and prepare arguments in shorter times than in proceedings before most national courts. According to the Rules of Procedure of the UPC, the first instance proceedings should be concluded within twelve months or slightly more.
A party could be in the process of preparing, at this very moment while this article is being written, an infringement claim of a European patent with the aim of obtaining a single decision across the different jurisdictions where it has been validated and is in force, relying on the fact that the European patent might not be opted out or may not be validly opted out (and that, in any case, even in case of a valid opting out, the infringement claim may still be filed with a national court). The still-unaware defendant or, when designated, its European patent attorney, will be served of this infringement claim and will have only one month for raising any one of the only three preliminary objections provided by the UPC law (jurisdiction and competence of the UPC, competence of the division and procedural language), and just three months for replying to the claim with a statement of defense and any counterclaim for revocation and related evidence. In case of a revocation action, the patent proprietor will have only two months to prepare and lodge a statement of defense and any counterclaim for infringement, together with the evidence for any alleged infringement.
These hard deadlines will be certainly harder for the first party to be ever sued before a new court having newly appointed judges, with new rules of procedure and no case law history.
