Lately, there has been a lot of discussion around the UPC and European patents with unitary effect. But what is the UPC and what does it mean in practice? What are European patents with unitary effect and how do they differentiate from the traditional European patents?
21.2.2017
The Unified Patent System – Where Do We Stand Now?
Hanna Paloheimo, Piia Raappana & Sakari Salonen
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Towards an Enhanced European Patent System
First of all, the UPC relates to the European-wide patent reform. The UPC, which is an abbreviation for the Unified Patent Court, is a planned single patent court covering 25 EU member states. If established, the UPC would be a common court to all member states contracting to the Unified Patent Court Agreement.
The purpose is that the UPC would have exclusive jurisdiction over both future European patents with unitary effect, European patents validated in one or more EU member state which is a party to the Unified Patent Court Agreement, supplementary protection certificates issued for a product covered by such a patent and European patent applications − the jurisdiction, however, being subject to certain exceptions during the transitional period. The UPC’s rulings would have effect in those contracting member states that have ratified the Unified Patent Court Agreement. The UPC would not have any jurisdiction over national patents or supplementary protection certificates granted for a national patent. After the reform, the Finnish Market Court would still have jurisdiction over Finnish national patents and supplementary protection certificates granted for a Finnish patent.
The European patent with unitary effect − the unitary patent − would be a new, supranational option to have patent protection in Europe. At the moment a European patent needs to be validated in each contracting state where patent protection is desired. This means in practice that a patent holder has a bundle of national patents. A unitary patent would only consist of a one single patent providing patent protection in the member states who are participating in the enhanced cooperation procedure.
After the reform, unitary patents and traditional European patents will be granted by European Patent Office (EPO). The pre-grant phase at the EPO is not subject to change. When the EPO has granted a European patent, the patent holder can file a request for unitary effect, i.e., a uniform patent protection in the participating member states.
When Will All This Happen?
To date, the implementation of the unified patent system is still ongoing. In order for the entire system to come into force, the Unified Patent Court Agreement must be ratified by at least thirteen EU member states (including the high-profile patent countries: the UK, France and Germany). At the moment, the following member states have ratified the agreement: Austria, Belgium, Bulgaria, Denmark, Finland, France, Italy, Luxembourg, Malta, Netherlands, Portugal and Sweden. Last autumn, the UK government confirmed it is continuing with preparations for ratification of the Unified Patent Court Agreement despite Brexit.
According to the latest information, the UPC Preparatory Committee, which is an entity responsible for establishment of the UPC, is currently working under the assumption that the Provisional Application Phase (PAP) will start this spring, most likely in May 2017. In practice, the PAP means that the UPC organisation will be established.
The assumption is that the Unified Patent Court Agreement will enter into force and the UPC will become operational in December of this year. Before the UPC becomes operational, the patent holders or applicants have the possibility to opt out their already-existing European patents or patent applications from the new UPC system for the whole life-time of that patent. This sunrise period for opting out patents will be a minimum of 3 months. The current plan is that the opt-out period will start in September 2017. As the sunrise period is somewhat short, it is worth making some contingency plans in this regard and considering implementing the opt-out (if so desired) already in the beginning of the sunrise period in order have sufficient time to deal with any possible queries or difficulties in the opt-out registration procedure.
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