Get ready for the Unitary Patent and Unified Patent Court to go live: 1 April 2023

The European Patent Office (EPO) and participating European Union countries are suggesting that the Unitary Patent (UP) and the Unified Patent Court (UPC) could go live on 1 April 2023.

What effect will the UPC have on my European patent?

The UPC will allow granted European patents to be enforced or challenged centrally and for a single ruling to be given that applies across multiple EU countries. The UPC will become the default forum for matters relating to European patent rights in the participating EU countries.

What should I now be considering?

If owners do not wish their patents to be centrally vulnerable under the UPC they need to take action to opt out before the system goes live.

If owners may be interested in making use of the UP they need to consider slowing down grant of their application so that it is still pending at the go-live date.

Opting out

What do I need to register an opt out for a European patent?

Under the opt out rules, we can only opt out a European patent if we have the authorisation to do so from the current legal owner and we have their name and address, irrespective of whether they are the owner of record at the EPO and/or at the local patent offices where the European patent was validated.

If there are multiple owners, we need agreement from them all, as well as their name and address details. If there are granted Supplementary Protection Certificates (SPCs), the owners of these rights also need to authorise the opt out and we need their name and address details.

If there are licensees, we do not directly need their consent or details, but the terms of the license may dictate that they need to be consulted or may even dictate what the decision is on opting out.

When and how can I register my decision to opt out?

Working from the suggested go live date of 1 April 2023, there will be a sunrise period of three months before this date, so starting on 1 January 2023, during which opt outs can be filed.

At the start of the sunrise period, if we are the European patent attorneys of record, we will be contacting you in relation to all granted EPO patents if you were our instructing contact at the time of grant in relation to whether an opt out is needed.

We will provide schedules of all such granted patents, grouped by the patent owner according to our records, but can only attend to an opt out if we receive positive instructions to do so including confirmation that all owners agree and their name and address details.

As the sunrise period is relatively short and the opt requirements are onerous, please consider now what planning is needed to allow you to provide instructions within the three-month window, including authorisations and name and address details for the required interested parties, or alternatively that you will be able to assist us in reaching the correct contact person for instructions.

Delaying grant

How do I slow down grant of my application so that it is still pending at the UP/UPC go-live date?

If your application has not yet had a Communication under R71(3) EPC issued, then it should be possible to achieve a date of grant after the go-live date without any action other than perhaps making fuller use of response periods set.

If your application has an outstanding Communication under R71(3) EPC with a response date of before 1 January 2023 we can consider using further processing or disapproving the text proposed for grant when responding to the communication to delay grant.

For any Communication pursuant to Rule 71(3) EPC responses filed from 1 January 2023 we would be able to request that the date of grant is delayed until 1 April 2023, so that you have the option of proceeding with a UP.

None of these actions tie you into having to proceed with a UP but simply delay grant so that you can make that choice.

Proceeding with a UP does however mean that you cannot opt out of the UPC for that patent.

If you would like to discuss your UP and UPC options, please contact the author or your usual Barker Brettell attorney.