Posted on 27/1/2022

UPC Update: Austria ratifies the Protocol on Provisional Application

The UPC is expected to be fully up and running in early 2023.

The Unified Patent Court (UPC) is now a large step closer after Austria ratified the Protocol on the Provisional Application (PPA) of the Unified Patent Court Agreement (UPCA).

After Germany ratified it in September 2021, we were waiting on two further countries following suit. Slovenia did so on 15 October 2021, and Austria has now also on 19 January 2022.

The PPA will now last at least eight months and will be used to solve a series of practical issues necessary for the functioning of the Unitary Patent Court, including setting up the IT system of the Court, completion of the Case Management System, adoption of the Court’s budget, the recruitment of staff, including selection and appointment of the Judges, finalising the locations and premises of the Court, and inaugural meetings of the governing bodies of the Court.

Once this is complete, the final instrument of ratification of the UPCA will be deposited by Germany.

The UPCA will then enter into force on the first day of the fourth month following the deposit of the final instrument.

The UPC is therefore expected to be up and running in early 2023, and a new patent system will be in effect in Europe.

How the UPC will work

When it is up and running, unless they are opted-out, granted European patents will be subject to the jurisdiction of the UPC as well as the national courts of the UPC countries. This means that patentees will be able to enforce their European patents in a single action across all the countries that have ratified the UPC Agreement and where the patent is validated.

Conversely, these patents can also be attacked, and potentially revoked, in a single action before the UPC’s Central Division. This contrasts to the current situation where a European patent is a bundle of national rights, each of which can only be revoked in separate actions before the national courts after the EPO’s 9-month opposition period has expired.

The UPC system is however not compulsory. For the three months leading up to the UPC becoming operational (i.e. potentially from sometime in September/October 2022), there will be a so-called ‘sunrise period’, which will provide the opportunity for owners of European patents and patent applications to opt out of the UPC system before it even starts. For those patents which are opted out, the current situation will continue to apply. Therefore, opting out a European patent during the sunrise period is the only way to guarantee that it will not be centrally attacked in the UPC system.

For European patent applications which are pending before, but granted after, the UPC system starts, their owners will need to validate the European patent as national patents as they do now, and simultaneously file an opt-out demand, to avoid the possibility of proceeding being filed in the UPC before the patentee can opt-out.

It will however be possible to opt back in any patents which have previously been opted out, as long as there is no ongoing national litigation involving those patents. This may be relevant if a patent owner wants to try and enforce a patent across Europe in one action. If this is done, however, it would not later be possible to opt the patent back out of the UPC system.

There will also be a transitional period of 7 years (which may be extended for a further 7 years) within which patentees can opt out a European patent from the UPC’s jurisdiction, unless proceedings before the UPC have already begun. Additionally, during this transitional period, there will be the choice of whether to bring an action relating to a European patent before a national court or before the UPC. Once the transitional period ends, if the patent is in the UPC system, proceedings must be brought before the UPC.

For patents granted under the UPC as a unitary patent, the possibility of opting out or bringing an action before a national court during the transitional period will not be available.

With the UPC now becoming a reality in the near future, owners of European patents and patent applications should therefore give thought as to whether the UPC system or the current system would be more beneficial for their rights.

For advice on the UPC and how it may affect your patents or applications, please contact one of our experts.

Wilson Gunn