Legal Alert: European Unified Patent Court & Unitary Patent to Open in 2017

Co-authored by: Herbert Kunz

December 2017 is the new target date for the Unified Patent Court (UPC) to open to receive cases, according to a January 16, 2017 notice from the Preparatory Committee.

With the United Kingdom (UK) having announced that it will ratify the European Unitary Patent Agreement (UPCA), the major remaining steps to implement the European Unitary Patent (UP) and Unified Patent Court (UPC) will be:

1. the UK and Germany will give final parliamentary approval of the UPCA and the Protocol on provisional application of the UPCA, probably by April or May 2017;
2. the Court will come into existence for completion of preparations pursuant to that protocol in May, and will complete its hiring of judges and staff, and other necessary steps about six months before opening to receive cases;
3. patent owners wishing to opt-out of the UPC for their conventional European Patents will be able to do so starting in September, 2017; and,
4. assuming that everything proceeds smoothly in approximately the first two months under that protocol, Germany will deposit the final required ratification, which will trigger the formal opening of the Court on the first day of the fourth month after that deposit. The EPO will begin granting UPs on the same date.

The EU regulation permitting registration of patent owners' requests for a new European Patent to have unitary effect, will come into effect on the date of entry into force of the UPCA. The EPO has adopted implementing rules and declared that it is ready for the start of the UP granting system.

Looking beyond 2017, the majority view is that the UK will probably be able to stay in the UPC after leaving the EU (Brexit), which will occur no sooner than 2019. It appears very unlikely that an owner electing a UP pre-Brexit will end up with anything less than conventional EP rights for its patent in the UK and its UP rights in the other participating states post-Brexit. Future updates will discuss how the UK may continue as a member of the UPC and in the UP system.

Patent owners who may be concerned about risks in the UPC or involving a UP will be able to obtain conventional, nationally validated European Patents, as in the past, and will be able to opt-out of the UPC for such EPs in at least the first seven years of the UPC. Having opted-out, if they wish, they will be able to opt-into the UPC again. A future update will discuss the opt-out procedure and the necessary due diligence.

Detailed Discussion

1. Parliamentary Approval in the UK and Germany

The only remaining step before the UK government leadership can deposit the UK's instrument of ratification is for the UK and Scottish Parliaments to give final approval to draft orders for giving effect in the United Kingdom to jurisdiction for the Unified Patent Court, and the related Protocol on Privileges and Immunities. Normally, in the case of patent matters, that would be a routine, formal procedure. In this case, there may be objections because the UPC Agreement includes provisions for referral of a few issues of EU law to the Court of Justice of the European Union (CJEU). Such objections appear very unlikely to block approval, because the leadership has decided to ratify the UPCA. The target for approval reportedly is the end of March 2017.

It has been intended by the UPC organizers that Germany will be the last to deposit its ratification of the UPCA, thereby triggering the provision in its Article 89, specifying that the UPCA will enter into force on the first day of the fourth month after that deposit. After a delay, due to a parliamentary technicality, the UPCA and Protocol on its provisional application are now before the German parliament and are expected to be approved in March or April 2017.

2. Protocol on Provisional Application of the UPCA

The UPC Agreement provides that the UPC come into existence after deposit of the last of the minimally required ratifications; however, it became clear that the Court could not be organized overnight and that a preparatory period would be necessary before the Court could receive cases. Therefore, a Protocol on provisional application of the Unified Patent Court Agreement was drafted and was signed by most of the participating states when that protocol opened for signature on October 1, 2015. That protocol would permit the Court to hire judges and staff, and take practically all other organizational steps before formally opening to receive cases.

As a practical matter, that protocol will take effect when both the UK and Germany have either ratified, or have given notice that they have received parliamentary approval to ratify the UPCA and the Protocol.

For more information on the Unitary Patent and Unified Patent Court, visit our dedicated web page, https://www.fr.com/services/patent-law/unitary-patent/.