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

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

Benelux Court of Justice re-confirms dissimilarity in signs despite identical word elements

We, Office Freylinger SA have been delighted to assist our client, ACCESSIT SARL in the opposition proceedings in relation to their trademark against .

We are very happy to announce that the Benelux Court of Justice rendered its decision in our client’s favour by following our submitted observations emphasising that despite the similarities between both signs regarding the descriptive verbal element “LUXAUTO, the signs differ in many aspects including the typeface used, the choice of colours, the designs, the number, position and size of the graphic elements.

The Court confirms the BOIP’sopposition decision that these different elements are more decisive for the overall appreciation of the sign of the trademark than the common descriptive word element and thus no likelihood of confusion could be determined. 

The decision of the Benelux Court of Justice can be accessed in full here.

Unitary patents – an overview

The European patent with unitary effect (unitary patent) is about to be introduced. It is an optional protection, which can be obtained upon the grant of a European patent.

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.

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. Upon ratification by Germany, 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.

Philippe Ocvirk recognized as World´s Leading IP Strategists by IAM

Philippe Ocvirk recognized as World´s Leading IP Strategists by IAM

Congratulations to Philippe Ocvirk for being recognized as the World´s Leading IP Strategists by IAM Strategy 300 – 2022 

Nouveau Comité de Direction

Nouveau Comité de Direction

Office Freylinger est heureux d’accueillir au sein de son Comité de Direction Marie-Christine Simon, Directeur Marques, ainsi que Pascale Vandorpe, Directeur Formalités.

Marie-Christine fait partie de notre Office depuis plus de 16 ans et était depuis octobre 2019 notre Head of Trademarks.  Elle est European Trademark and Design Attorney, Luxembourg IP Attorney (Conseil en Propriété Industrielle).  Elle est autorisée à exercer devant l’Office Benelux de la Propriété Intellectuelle (OBPI), l’Office de l’Union européenne pour la propriété intellectuelle (EUIPO) et l’Organisation Mondiale de la Propriété Intellectuelle (OMPI). 

Pascale Vandorpe, qui a rejoint notre office en 2002, était depuis 2019 responsable des Formalités et en charge du développement de toutes les formalités (brevets, marques, dessins, annuités, traductions, enregistrements), de l’application de la politique commerciale, du respect des délais, de la qualité et des procédures.

Nouveau site internet !

Nouveau site internet !

C’est avec plaisir que nous vous informons de la publication de notre nouveau site internet.

Après plusieurs mois de développement, nous sommes heureux de pouvoir vous présenter la vitrine de notre société sur la toile.  

Ce site a été pensé pour nos clients, pour nos partenaires mais aussi pour toute personne intéressée par la PI.

Nomination de Marie-Christine Simon au poste de Directeur Marques

Nomination de Marie-Christine Simon au poste de Directeur Marques

Office Freylinger a le plaisir de vous annoncer la nomination de Marie-Christine Simon au poste de Directeur Marques.  

Marie-Christine fait partie de notre cabinet depuis plus de 16 ans et était depuis octobre 2019 notre Head of Trademarks.

Marie-Christine est European Trademark and Design Attorney et Luxembourg IP Attorney (Conseil en Propriété Industrielle).  Elle est autorisée à exercer devant l’Office Benelux de la Propriété Intellectuelle (OBPI), l’Office de l’Union européenne pour la propriété intellectuelle (EUIPO) et l’Organisation Mondiale de la Propriété Intellectuelle (OMPI). 

Marie-Christine et son équipe se tiennent à votre entière disposition, en français, en anglais et en allemand, pour vous conseiller dans la stratégie de dépôt de protection, les litiges liés aux marques, dessins et noms de domaine, des audits des portefeuille de droits de PI ainsi que des recherches de marques.

Leurs domaines d’expertise sont les suivants : Marques, Dessins & Modèles, Contrat de licences, Noms de domaines, Logiciels et droits d’auteurs.

Départ à la retraite

Départ à la retraite

Après 30 ans au sein de notre cabinet, Monsieur Pierre Kihn prend sa retraite en date du 1er aout 2022. Nous le remercions pour sa contribution au développement d’Office Freylinger et lui souhaitons tout le meilleur dans sa nouvelle tranche de vie.

« Ideas Powered for business » – Financial support to SMEs for trademarks, designs and patents

This year again, the European Union Intellectual Property Office (EUIPO) has launched its grant scheme designed to help small and medium-sized enterprises (SMEs), which are defined according to the following criteria: fewer than 250 employees, less than EUR 50 million in turnover and an annual balance sheet total of less than EUR 43 million.

The terms and conditions of the SME Fund running until 16 December 2022 have somewhat changed compared to the previous year.

For a small or medium-sized enterprise (SME) established in the European Union, it is now possible to be granted a voucher of EUR 1500 to cover 75% of the trademark and/or design fees at national or regional level within the EU, 50% of the non-EU trademark and design fees filed via the Madrid or Hague system (i.e. international trademarks and designs), as well as a voucher of EUR 750 to cover 50% of the fees for national patents.

Since the available funds are limited, applications first received by the EUIPO will be given priority.

The process is made of 4 steps:

  • Submit the application for obtaining a grant
  • Obtain the grant award notification from the EUIPO and the corresponding voucher
  • Request and pay for the IP activities that may be reimbursed
  • Apply for reimbursement

While applying for such a grant, you should be aware that you will have to wait before proceeding to the IP activities (filings, payment of fees etc.), possibly for several weeks, in order to obtain the grant award for reimbursement from the EUIPO.

Our firm will be pleased to assist you with all the administrative steps which are required for this grant application.

Documents to be provided are as follows:

a. Your company’s VAT certificate

b. Bank statement of the company containing the name of the company, the complete IBAN number with the country code and BIC/SWIFT code

c. Signed “Declaration of honour” enabling us to represent you in this procedure

Do not hesitate to contact us for any further information on this grant scheme.

Nathalie Cailteux