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Unified Patent Court to open its doors for business in 2022?

Posted on 2 September 2021

Recent developments in relation to the Unified Patent Court (UPC) have led to the UPC Preparatory Committee issuing an updated roadmap, estimating that it will open its doors for business 'around mid-2022'.

After several decades of discussion around the creation of a unitary patent regime in the EU and related court system (the Unitary Patent and UPC), the start date of the project has been put on hold for a number of years. The first obstacle was the Brexit vote, with the second taking the form of various constitutional court challenges in Germany. In relation to Brexit, the UK abandoned its previous position of wanting to remain involved in the project.  Following the rejection of the latest challenges in Germany (with applications for interim injunctions being dismissed), legislation allowing Germany to ratify the UPC Agreement (and its Protocol on Provisional Application of the UPC Agreement – the PAP-Protocol) came into force on 13 August 2021. This now clears the path for German ratification and also ultimately for the UPC to open its doors for business.

Following the announcement in Germany, the UPC Preparatory Committee has issued a statement as to the impact on timing. Germany is now in a position to ratify the PAP-Protocol, albeit two further participating EU Member States are also required to do so for it to enter into force. This will mark the start of the provisional application period. According to the Preparatory Committee, these ratifications should take place in Autumn 2021. At that point, the organisational capability of the UPC will be established and the final preparatory steps can be taken, including the significant task of finalising judicial recruitment for the UPC, as well as the all-important IT systems. The UPC Preparatory Committee estimates this stage will take approximately eight months.

Once it is apparent that the relevant preparatory work will be completed, Germany will then need to deposit its instrument of ratification of the UPC Agreement, with the Agreement entering into force on the first day of the fourth month following that deposit. The UPC Preparatory Committee estimate this will take place around mid-2022.

We have, of course, been here before and slippage in this timetable seems likely.  Judicial recruitment and training will not be straightforward. Other significant points of detail also need to be resolved – such as who will now host the pharmaceuticals division of the Central Division, which had been due to operate in London? And, will the regime as a whole be as attractive to users, given the significant delay, and the confirmation of the UK's non-participation?

Holders of existing standard European Patents that might want to opt those patents out of the UPC's jurisdiction should continue to monitor for developments in relation to timing, including the sunrise period for opt-outs to be lodged before the UPC is in operation. If they fail to opt those patents out, they will be at risk of being invalidated in all those EU Member States that are participating in the UPC. If opted out, however, those patents will continue to need to be challenged, and enforced, in each relevant country separately. The decision on opt-out may, of course, be impacted to some extent by the fact that European Patents designating the UK will not be within the UPC's jurisdiction. For example, if the owner of a European Patent decides to keep it within the jurisdiction of the UPC, separate proceedings will still be needed in relation to the UK (and also in any relevant EU Member State that is not participating in the UPC).

Businesses should also be alive to the fact that they may be at risk of being sued in a UPC division for patent infringement – either for infringement of a Unitary Patent, or of a non-opted out standard European Patent. Such an action will bring the risk of liability for damages across all relevant EU Member States (as well as possibly beyond the EU's borders) and potentially sizeable costs.

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