It has now been confirmed that the Unitary Patent (UP) and the Unified Patent Court (UPC) are intended to come into force on the 1 June 2023.
Following an initial transition period, this will result in the creation of a single approach to patent registration and litigation across 24 European Union member states.
It will also signify the biggest change to the patent landscape in Europe for several decades. We recommend that you use the final months before the new system comes into force to consider the commercial implications of the different options available.
WHAT DO YOU NEED TO DO TO ENSURE YOU ARE COMPLETELY UPC READY?
Users of the European patent system now have two critical and immediate decisions to make so you are completely ready for 1 June 2023.
1. You need to decide what you will do with your existing European and national patents
If you don’t want your existing European and national patents to fall under the jurisdiction of the UPC, you can ‘opt-out’.
If you ‘opt-out’ you will retain the right to litigate your nationally validated patents separately in national courts.
If you decide to opt-out, you will also have the ability to opt back in at some point in the future as long as you can meet certain requirements.
However, if you don’t officially opt-out a given patent, that patent will automatically fall under the new UPC system alongside the existing jurisdictions of the national courts.
If this happens, you will have the option to use the UPC to litigate your patent in the UPC states although third parties may use the UPC to challenge the validity of the patent.
2. You need to decide how you will progress all new European patents
For European patents approaching grant, you may wish to delay their progress in order to allow for a Unitary Patent to be obtained (potentially alongside national validation in other states).
When the Unitary Patent first comes into being, it will be possible to choose to validate a granted European patent as a Unitary Patent in participating states or to pursue separate national validations in line with the current system. However, once the UPC system is in place and the initial (7 to 14-year) transition period has ended, following grant at the EPO patent protection in participating states will only be available by obtaining a Unitary Patent, which will come under the sole jurisdiction of the UPC.
WHAT DO YOU NEED TO DO NOW?
If you are:
- A patent holder with existing European Patents
- An applicant whose EP patent application is about to be granted
- A patentee with an EP patent to be enforced
you need to act now!
You need to decide whether opting out or participating in the new system makes the best commercial sense for your patent portfolio. This is likely to be a highly complex discussion, which is why we are here to help.
Potter Clarkson’s UPC Ready audit service includes:
- An independent and objective review of your patent portfolio.
- A one-hour meeting to discuss our findings in the context of your business.
- Solid, commercial recommendations you can use to decide on the most appropriate course of action to optimise your commercial position.
- Our handling of the opt-out process, should you decide it is the best option.
We will provide everything you need to make sure you are fully UPC Ready well before the April deadline.
If you would like to take advantage of our UPC Ready opt-out service, please contact us today.
WHY SHOULD YOU CHOOSE POTTER CLARKSON TO GET YOU UPC READY?
Because of the unique way Potter Clarkson is structured and situated, we can offer three key benefits other European IP firms can’t match; three benefits which make us the best choice to get you UPC ready.
1. Our geographical reach
With offices in key UPC states alongside our UK presence, we can address the issues from all angles, helping you to properly assess the opportunities and risks presented by the new system and build a strategy that maximises the benefit to your business.
2. We are genuinely full service
Our team combines patent attorneys and patent litigators. This means we are one of the only IP firms that can instantly provide all the specialist expertise you’ll need to navigate the impact of the UPC as easily and strategically possible.
Our patent attorneys already work in tandem with our in-house litigators. They know how to work together cohesively, cost-effectively and successfully to provide advice that examines IP risks and opportunities from every perspective.
3. New rules, established solutions
The UPC will be a new court with new rules but adapting to the approach taken and developing strategies for obtaining the best possible outcomes is already second nature to our team of experienced litigators.
If you would like to arrange a time for us to talk you through our UPC Ready opt-out service, please contact us today.
Alternatively, please contact your usual Potter Clarkson representative who will find the most convenient time to explain how our UPC Ready opt-out service works.