Two-month Postponement of the Start Date of the UPC and the Sunrise Period
In view of a new timeline issued on December 5, 2022, the Unified Patent Court (UPC) could start receiving cases on June 1, 2023, and not on April 1, 2023, as previously planned and announced.
This means that Germany would postpone the ratification of the UPC Agreement to February 2023, and notably implies that:
- the three-month “sunrise period”, during which any European patent application/patent may be “opted-out” of the exclusive competence of the UPC, would start on March 1, 2023;
- every European patent granted on or after June 1, 2023 could be registered as unitary patent throughout the initial 17 participating states (i.e., Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden), upon a valid request for unitary effect to be filed with the EPO within one month after grant; and
- as of January 1, 2023, early requests for unitary effect and requests for delaying the issuance of a decision to grant a European patent will be allowed to be filed before the European Patent Office (EPO).
While there are several factors which might affect a decision whether to request a unitary patent and whether to opt existing European patents/applications out of the UPC (including, for example, not only the number and geographical distribution of potential infringers and licensees, but also the expected life-cycle of the technology to be protected), the geographical coverage and costs, together with the propensity to litigate, are among the most important factors.
On the one hand, unitary patents may be more convenient to companies and individuals that desire to take benefit of the potential advantages of the UPC system (i.e., a single, low-cost registration in the initial 17 participating states, a single translation of the specification and only for a transitional period of at least 6 years, a single renewal fee, and a single enforcement system), while accepting the related risks of a central revocation before the UPC.
However, after the transitional period of least 6 years, extendable up to a maximum of 12 years, where translation will no longer be required, and especially after the transitional period of 7 years, extendable up to a maximum of 14 years, where opting out will no longer be available and the UPC will have exclusive jurisdiction over both unitary patents and European patents, unitary patents could be still more cost-effective and suitable for many more users.
On the other hand, in view of the lower cost of a European patent validated in up to 3 countries, especially if these countries are party of the London Agreement not requiring any translation (i.e., Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, and the UK), European patents may still be a less expensive choice. Additionally, in this case, if no litigation is contemplated, then opting out of the European patent of the UPC may be more desirable.
Whether a unitary patent is selected as the most suitable patent right for obtaining protection in Europe or not, the classical validation route will still be necessary for obtaining protection in all countries that do not participate to the UPC system, be they non-EU countries (such as the UK, Switzerland, Norway or Turkey), or be they EU countries still having to ratify the UPC Agreement (such as Ireland, the Czech Republic, Slovakia, Hungary, and Greece) or to sign it (i.e., Spain, Croatia, and Poland).