Webinaire – le nouveau brevet unitaire européen – 16.12.2022

Office Freylinger vous propose un webinaire consacré au système du brevet unitaire européen qui entrera en vigueur au printemps 2023. Il s’agit d’une révolution dans le monde des brevets en Europe.

Le webinaire se tiendra le vendredi 16 décembre de 11h00 à 12h00.

Philippe Ocvirk, European Patent Attorney, présentera ce nouveau système qui est attendu depuis plus de 50 ans et repose sur deux piliers :

  • le brevet européen à effet unitaire (brevet unitaire) – une protection facultative, qui peut être obtenue à la délivrance d’un brevet européen.
  • la création d’une juridiction européenne spécialisée en matière de brevets : la Juridiction unifiée du brevet (JUB).

Le webinaire propose une introduction à ce nouveau système. L’Office européen des brevets a annoncé des mesures transitoires qui permettent d’opter dès le 1er janvier 2023 pour un brevet unitaire à la délivrance du brevet européen. La nouvelle juridiction aura compétence pour tous les brevets européens, unitaires ou classiques, y compris ceux déjà délivrés.

Tous les propriétaires de brevets européens sont donc concernés par le nouveau système.

Inscription gratuite en remplissant ce formulaire :

https://forms.gle/fzCxyKGgR1GHJEMh8

UPC strategies – Considerations on the Opt-Out

The present article presents some considerations on the possibility of opting out patents from the exclusive competence of the Unified Patent Court.

Staying in to benefit from the UPC system

The UPC will include:

  • Judicial judges experimented in patent matters
  • Technical Judges that are likely to have a better understanding of technically complex inventions and a better reasoning on patent infringement.

The new Court will obviously prevent situations of contradictory decisions that may occur when litigating the same case before different national Courts.

The Rules of Proceeding of the UPC are designed to reach decisions within one year, if the defined schedule is respected, thus substantially reducing the duration of proceedings compared to some national Courts.

The UPC is particularly powerful in case of multiple infringements in different European countries, since a decision can be obtained through a single action brought before the UPC and will have effect over all UPC-A member states. Choosing the UPC will, then, significantly reduce the litigation costs in comparison with several litigations to be carried out in different countries.

Reasons to opt out

With the UPC, a European patent can be revoked in all states by a single decision. This will allow third parties and suspected infringers to efficiently challenge the validity, during the whole lifetime of the patents.
Hence European patents obtained before the UPC opening and for which the opposition period has expired will remain at risk of central revocation.

Moreover, the lack of experience and case law from the UPC may make choosing the UPC risky as we do not know yet the position that will be taken by the Court, in particular regarding the validity of patents. Also, UPC rules and procedures are obviously untried; it will take several years to achieve consistency in decisions.

Another element to consider where making the choice to opt out patents is that opt-out must be made by all proprietors and in respect of all of the states for which the European patent has been granted, not only EU member states. The first difficulty that may arise from this rule is to identify the true proprietors of the patent, which will not necessarily be the registered proprietors, especially when patents have been assigned from a third party. Ownership should be checked, although there is no necessity to update/correct registers. The second difficulty is the necessity for all the proprietors to join the opt-out request. As such, it is likely that when litigation arise, the opt out itself may be subject to discussion.

A proprietor having registered an opt-out and wishing to bring an action before the UPC to benefit from its pan-European jurisdiction may opt in again, by withdrawing the opt-out. However, the proprietor may be impeded from opting back in where an action has already been brought before a national Court; the patent is thus locked out of the UPC forever.

Philippe OCVIRK, Partner | European patent attorney

UPC and Opt-Out

UPC and Opt-Out

The Unified Patent Court (UPC) will open its doors in spring 2023. The date of 01.04.2023 has been announced by the Preparatory Committee . Its jurisdiction will extend over all European patents in the territories of EU member states having ratified the Agreement on a Unified Patent Court (UPC-A).
Antagonistically, while the UPC-A creates the long-awaited European patent Court, it also comprises provisions to derogate from its competence, known as ‘opt-out’.

Jurisdiction of the UPC

According to Art. 3 of the Agreement on a Unified Patent Court (UPC-A) the future UPC will have jurisdiction not only over European patents with unitary effect, but also over traditional European patents (‘validated’ patents) and pending applications, and over SPCs, even if these are granted before its entry into force.

During a ‘transitional‘ period however, the national Courts will remain competent to hear cases relating to validated European patents.

Opt-out definition

Opting-out is the option open to patentees and applicants to exclude disputes related to any of their validated European patents (in force or expired) or pending applications from the UPC’s jurisdiction. Any action for infringement or for revocation of an Opted-out European patent may only be heard by the competent national Courts, as is currently the case.
An opt-out has effect in all Member States and for the entire lifetime of the patent.

The UPC Preparatory Committee has decided that there will be no official fee for filing a request for an opt-out. There will however be costs associated with the handling of the opt-out procedure through your patent attorney firm.

For the avoidance of doubt, European patents with unitary effect cannot be opted out.

When to opt out

The registration of opt-outs will only be possible during the limited ‘transitional’ period (7 years, prolongable by 7 years). Practically, opt-out’s can be notified to the UPC Registry by the latest one month before expiry of the transitional period .
It should be noted that opting out will be possible during a ‘sunrise’ period spanning the three months preceding the opening of the UPC. The sunrise period is expected to start on 01.01.2023.

Important note: An Application to opt out a given patent cannot be registered if an action relating to said patent has already been brought before the UPC .

How to opt out

An application to opt out must be lodged with the UPC Registry.
Opt-outs are to be registered on a right per right basis and in the name of each and all proprietors or applicants.
The registers need not be updated, but in case of discrepancy a declaration must be filed alongside, stating that the requesters are entitled to be registered in the national patent registers.

The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.

The opt-out is only effective from the date of entry into the Register.

Withdrawal of the opt-out

An opt-out can be withdrawn at any moment, provided no action has been brought before a national Court .
This opt-in will then be definitive: the patent proprietor will not be able to opt out its European patent again .

If an opt-out application was registered for a pending European patent application, said opt-out will be automatically deemed withdrawn should the patentee decides to request unitary effect (obtain a unitary patent).

Philippe OCVIRK, Partner | European patent attorney

Unitary patent – Delaying grant and requesting early effect

The EPO has announced that its transitional measures for Unitary Patents (UP) will start on 1 January 2023.

From that date, applicants who have received a communication under rule 71(3) EC (intention to grant) may file:

  • an early requests for unitary effect and/or
  • a request for a delay in issuing the decision to grant a European patent.

The measures are applicable until the entry into operation of the UP system and UPC which is expected to be on 1 April 2023.

The two transitional measures are interrelated but separate from a procedural perspective.

1. Early request for unitary effect

Early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.

If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable (already before grant) or reject the request for unitary effect.

The request should be filed using dedicated EPO Form 7000 and thus include the required translation.

2. Request for a delay in issuing the decisions to grant a European patent

This transitional measure allows the applicant to delay grant of a European patent in order to make it eligible for Unitary Patent protection.

A request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.

A request for delay filed can be filed on the same day as the approval of the text intended for grant. The request for delay must be filed using dedicated EPO form 2025.

Unitary patent transitory measures set to start on 1.01.2023

The European patent office (EPO) announced earlier this week the starting date of its transitional measures relating to unitary patent protection.

As of 1 January 2023, patent applicants will be able to:

  • file early requests for unitary effect; and
  • file requests for a delay in issuing the decision to grant a European patent.

These two measures – announced in December 2021 – were introduced to support an early uptake of the Unitary Patent by the users. Cautiously, the EPO initially considered that these measures would only apply after Germany would have effectively ratified.

With this announcement the EPO hence anticipates the German ratification, following the lead of the Unified Patent Court, who declared that it will open its doors on 1st April 2023 (see implementation roadmap)

The transitory measures are applicable until the entry into operation of the Unitary Patent Protection system.

Philippe OCVIRK, Partner & European patent attorney

Unitary patents – an overview

The European patent with unitary effect (unitary patent) will be introduced on 1st April 2023. It is an optional protection, which can be obtained upon the grant of a European patent.

On same date, the Unified Patent Court will open its doors.

Legal framework

The unitary patent is created by two EU regulations issued in 2012, which were adopted through the route of enhanced cooperation between a number of “participating” EU member states (25 to date).

The application of the regulations depends on the entry into force of the Agreement on a Unified Patent Court (UPC) of 19 February 2013 which establishes a specialized patent jurisdiction with pan-European competence.

The protocol on provisional application of the UPC Agreement entered into force on 19 January 2022.

The regulations will enter into force on the first day of the 4th month after the ratification of the UPCA by Germany, expected in December 2022.

As shown in the below timeline, the system will go live on 1 April 2023.

A unitary patent

The unitary patent provides uniform protection and produces identical effects in all participating member states. It can only be limited, transferred, revoked or lapse in respect of all of them.
A single maintenance fee will be payable annually to the EPO (total cost less than €5000 over the first 10 years).

Territorial scope

Initially the unitary patent will cover the 17 countries which have ratified the UPC Agreement: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Lithuania, Latvia, Luxembourg, Malta, Netherlands, Portugal, Sweden and Slovenia.
Any participating member state (currently 25) can ratify and join the system. This does not affect the coverage of European patents for which unitary effect was previously registered.

Obtaining unitary effect

On grant of the European patent, the patent owner will have the choice between a unitary patent or classical validation of his patent in his countries of interest. The two protections coexist.

The request for unitary effect must be submitted by the owner to the European Patent Office within one month of the mention of the publication of the grant of the European patent. No fee is required.

Unitary effect can only be obtained for a European patent filed on or after 01.03.2007, and which has the same set of claims for all participating member states.

Translations

The new system abolishes translations by relying on high quality machine translations.
For a transitional period of 6 to 12 years, an English translation will have to be provided if the patent is granted in French or German. If the patent is granted in English, a translation will have to be provided in another EU language.

Transitional measures

Two measures have been announced by the EPO. As from 1 January 2023 it will be possible to:

  • file an early request for unitary effect ; and
  • delay the grant of the European patent.

Opt-out

The UPC will have jurisdiction over European patent litigation in general. During a transitional period of 7 years, the owner of a patent (or application) will have the possibility to opt out from the exclusive jurisdiction of the UPC by notifying their opt-out to the Registry (except for unitary patents), so that litigation can be brought before a national court.

A sunrise period of 3 months will allow patentees to file their opt-outs in advance.

Practical considerations

The creation of the unitary patent and the UPC is imminent and will considerably change the European patent system.
It is time for patent holders to review their portfolios, and determine which applications will be validated by the classical route or transformed into a unitary patent. Questions of delaying the examination procedure and of the opt-out should be raised.

Philippe Ocvirk, Partner | European patent attorney

Click this link to download our notice on the Unitary Patent.

The unitary patent package – a major change in the patent landscape in Europe.

The unitary patent package is expected to go live in spring 2023. It is based on two pillars:

  • a new unitary patent right known as the European patent with unitary effect (in short ‘Unitary Patent’), which is created by EU instruments; and
  • a new court, the Unified patent court (UPC), which is competent for all European patents. 

Office Freylinger will regularly inform their clients and associates about this new system.

Click this link to read our notice on the Unitary Patent.

It is important for patent applicants and owners to get acquainted with the pros and cons of the new system.

Please contact your usual Freylinger attorney for any information on the UP system or to discuss your IP strategy.

Philippe Ocvirk