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The proposed European Union package includes two regulations that will create a European Patent with unitary effect (“Unitary Patent” or “UP”) and a Unified Patent Court (UPC) Agreement (UPCA—a treaty) that would create a Unified Patent Court for at least the 16 participating EU states that will have ratified the UPC Agreement, which include: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. The following seven EU states have signed the UPCA and may participate after they ratify that agreement: Cyprus, Czechia, Greece, Hungary, Ireland, Romania and Slovakia. Poland and Spain have not signed the UPCA and currently do not plan to participate in the UP and UPC. Croatia joined the EU on 1 July 2013, after the UPCA was signed. It could join the UPC-UP arrangement by signing and ratifying the UPCA.
The Unitary Patent regulations specify that they would be effective on the same date as the UPCA on the first day of the fourth month after minimum ratification of the UPCA by 13 EU states including France, Germany and the United Kingdom. Now that the UK has left the EU, the UP and UPC preparations are proceeding without the UK.
A Protocol on provisional application (“PPA”), signed on October 1, 2015, came into effect on January 19, 2022, permitting would permit some parts of the UPC Agreement to be applied on the day after the UPCA reaches minimum ratification. That would permit organizational activities before the UPCA enters into full force and the court opens, including the recruitment of judges, testing of IT systems and early registration of opt-out demands.
The Unitary Patent will provide patent protection in all participating EU states, and may lower translation and post-grant costs for parties electing to use it. It would be an option for European Patent (“EP”) owners, who would have the opportunity to validate their EP after grant as either a UP for the participating EU states or conventional national EP parts. The UP, however, would only be available when the EP is granted with the same set of claims for all participating states. If the UP is elected, it would still be possible to validate national parts in nonparticipating EU states and non-EU states.
The Unified Patent Court eventually will handle all litigation involving patents issued by the European Patent Office that are validated in participating EU states, including both the regular, nationally validated European Patents and the new Unitary Patents. During an initial, transitional period of seven years, which may be extended, the UPC will have exclusive competence for Unitary Patents and will share competence for other EPs with the respective national courts. During that period the owner of a conventional EP may opt-out of UPC competence and opt-in again.
Currently, the necessary ratifications of the original UPCA and protocols are nearly complete. Implementation of the UPC and UP have been delayed by the UK leaving the EU (“Brexit”) and by challenges to German ratification in the German Constitutional Court (Bundesverfassungsgericht).
Although the UK has ratified the UPCA, it left the EU on January 31, 2020 and decided not to seek involvement in the UP/UPC system. Therefore, the remaining participating states have had to address the UPCA provisions referring to the UK and to London as the location of a part of the UPC Central Division. Following a decision of the UPC Preparatory Committee in September 2020, it now appears that the UPC will start without replacing the London part and will consider a replacement later. Italy has proposed that the part be in Milan. Denmark and Portugal also have shown interest in hosting that part.
German ratification was delayed by two sets of Constitutional Court complaints, the latest of which—filed in December 2020—sought an interim injunction. The German Constitutional Court rejected the interim injunction applications on 9 July 2021, based on findings that the complaints were inadmissible on the merits. That cleared the path for legislation enabling Germany to ratify the Unified Patent Court (UPC) Agreement and its Protocol on Provisional Application (PPA), which came into force on 13 August 2021.
Austria deposited its notice of ratification of the PPA on 18 January 2022, becoming the last of the required 13 UPC member states to approve the PPA. Therefore, in accordance with the PPA, the formal steps toward opening of the UPC and availability of Unitary Patents began on the following day, 19 January 2022. In particular, the UPC Administrative Committee came into existence on that date and will manage the establishment of the new court.
The Administrative Committee held its inaugural meeting on 22 February 2022. It adopted its committee Rules of Procedure, the Rules on the European Patent Litigation Certificate and other appropriate qualifications, the Court’s Service and Staff Regulations, as well as its Financial Regulations.
It also appointed the members of the Advisory Committee, who will interview candidate judges for the Court, starting at the end of March 2022. See here.
Because German ratification of the UPC Agreement will trigger a timeline of approximately four months until opening of the UPC, Germany is expected to postpone actually depositing its ratification of the UPC Agreement until the Administrative Committee is satisfied that preparations can be completed within that period.
Updated 20 January 2022
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