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Is the Unified Patent Court on track for a 2022/2023 start date?

Posted on 14 December 2021

Updated 19 January 2022

It is now looking increasingly likely that, after many years of delay and doubt, the Unified Patent Court (UPC) will be operational within the next 12 months or so. The Unitary Patent will also at that point become available to provide protection in all relevant participating EU Member States.

On 3 December 2021, the European Patent Office reported that the Austrian Parliament had finalised its parliamentary process for ratifying the Protocol on Provisional Application of the UPC Agreement – the PAP Protocol. Austria has now deposited its ratification instruments and the Provisional Application stage of the UPC has now begun.

During this phase, anticipated to last at least eight months, the final preparatory steps for getting the UPC ready to operate will take place. Once it is satisfied that the relevant preparatory work has been completed, Germany is then expected to deposit its instrument of ratification of the UPC Agreement itself, which will constitute the final step in the process. The UPC Agreement will then enter into force – and the UPC will 'open its doors for business' on the first day of the fourth month following that deposit. In August 2021, the UPC Preparatory Committee identified a start date for the UPC of around mid-2022 – while this date won't be met, things do appear on course for the UPC to finally begin work around the end of 2022/beginning of 2023.

This does depend of course upon how long the preparatory work actually takes, and whether the eight month estimate for this phase is a realistic one or not. As we highlighted in our earlier update, judicial recruitment and training, and ensuring that the IT infrastructure is effective and robust, will be a significant operation. Further, some argue that the implications of the UK's decision to not continue with the project having ratified the UPC Agreement have not been properly considered and dealt with – both legally and in the context of the likely value of the regime. Finalising the location of the pharmaceuticals division of the Central Division, which had been due to operate in London, will also be a priority as the Provisional Application phase gets underway.

While it remains possible therefore that there could be another bump in the road for the UPC, holders of existing standard European Patents that might want to opt their patents out of the jurisdiction of the UPC should be getting ready to do so during the three-month sunrise period that will be available for opt-outs to be lodged before the UPC begins operation. In particular, they will be expecting there to be some clarity on the practicalities for opting-out given the likely numbers of patents involved. 

Many patentees would already have undertaken the relevant assessment as to whether to keep their standard European Patent portfolio within the UPC's jurisdiction or not, but they may want to refresh this thinking now. Standard European Patents that are not opted out will be under the UPC's jurisdiction and therefore at risk of being invalidated in all EU Member States that are participating in the UPC. The opportunity to opt out of the UPC will be lost once a claim for revocation or a declaration of non-infringement of the relevant patent is brought before the UPC. 

However, keeping a European Patent in the UPC's jurisdiction does of course mean that the patentee may obtain relief for patent infringement across all relevant participating EU Member States. There is the potential therefore for some interesting considerations around strategies for enforcement of patents and patent challenges. 

In addition to considering opt-out strategies for existing portfolios, patentees ought sensibly to consider how the Unitary Patent will impact future patent filing strategies, to ensure maximum protection going forward and to optimise future enforcement strategies around key innovations. To the extent not already considered in preparation for the UPC, patentees and licensees alike are advised to prioritise a review of existing licence arrangements to ensure that they address the various considerations of the UPC around opt-outs and enforcement.

Should you require assistance with any aspects of preparing for the Unitary Patent and UPC, please contact our Patents team.

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