Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day, EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. The new system will start on 1 June 2023.
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Michael Schüller22.05.2023
Michael Schüller is partner at Winter, Brandl – Partnerschaft mbB.
As (German) Patent Attorney and European Patent and Trademark Attorney, he supports clients in the field of mechanical engineering.
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Overview of the new European Unitary Patent System, in particular with regard to the opt-out request
Currently, the new European Unified Patent System is being implemented, which is planned to start on April 1, 2023. The introduction of the Unified Patent System will have an impact on all European patents, including “old” European patents that have already been granted and are in force. Please find below more information on the new Unified Patent System.
After the start of the European Unified Patent System, an applicant of a European patent application can choose between the following options after grant:
- European Unitary Patent which will be uniformly in force in (currently) 17 EU states, including Germany, France, and Italy. In Fig. 1 below, these are the EU states marked in blue.
- Classic European Patent, which will be validated in one or more of the 39 member states (including Montenegro as of October 1, 2022) of the European Patent Organization, as before. In Fig. 1, these are all states marked in blue and green.
- Mixture of the European Unitary Patent, which will be in force in 17 EU states (see Fig. 1 in blue), and the Classic European Patent, which will be validated in one or more of the remaining 22 member states of the European Patent Organization (see Fig. 1 in green).
The new Unified Patent System provides for a Unified Patent Court. Patent infringement proceedings or nullity proceedings relating to a Unitary Patent can be conducted centrally via this court. The Unified Patent Court is responsible for European Unitary Patents and for classic European Patents and thus also for “old” European Patents which are still in force. However, in the case of a classical European Patent, during a transitional period of between 7 and 14 years after the start of the Unified Patent System, the national courts in the countries where the classic European Patent is validated will have jurisdiction in addition to the Unified Patent Court as before. In other words, for example, patent infringement proceedings in the case of a Unitary Patent will take place centrally before the Unified Patent Court, whereas in the case of a classic European Patent, a choice can be made between the Unified Patent Court and the national courts.
A patentee of a classic European Patent has the possibility – during the transitional period mentioned above – to exclude the jurisdiction of the Unified Patent Court. For this purpose, it is necessary to file a so-called “opt-out-request” for the classic European Patent. After the exclusion of the Unified Patent Court due to an opt-out-request, the national courts will continue to have exclusive jurisdiction for the classic European Patent.
Fig. 2 below shows the different possibilities.
Figure 2: different possibilities regarding a European patent protection
An opt-out-request can already be filed 3 months before the start of the Unified Patent system in the so-called “sunrise period”. It is currently planned that the sunrise period starts on January 1, 2023. The question as whether an opt-out-request should be filed for a classic European Patent depends on the individual case. An opt-out-request is only possible as long as no action is pending before the Unified Patent Court.
Patentees and applicants of classic European Patents should take the following steps with regard to the new Unified Patent System:
- A patent proprietor of a classic European Patent should be aware in advance – i.e. preferably before the start of the sunrise period – whether an opt-out-request is necessary. If so, this should be filed during the sunrise period.
- If a classic European Patent has several patentees, they must jointly decide on a possible opt-out-request. They should therefore reach an agreement – preferably in writing – regarding a possible opt-out-request.
If you have any questions about the new Unified Patent System – for example, about the steps mentioned above – we will be pleased to answer them personally.
You can also find more information on the new Unified Patent System in our whitepaper or directly download the pdf.
Michael Schüller28.11.2022
Michael Schüller is partner at Winter, Brandl – Partnerschaft mbB.
As (German) Patent Attorney and European Patent and Trademark Attorney, he supports clients in the field of mechanical engineering.
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Whitepaper: Basics of the European Unified Patent System
Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. At the moment, Germany is acting as a “Gatekeeper”. As soon as the system is ready, Germany will file its ratification certificate and 3-4 months later (according to Art. 89(1) UPCA) the Unified Patent System will start.
The introduction of the Unified Patent System has an impact on all European patents, also on “old” European patents which are already granted and in force. Patentees and applicants of European patents and applications should be aware of the implications and respond as needed. This white paper is intended to provide a basic overview of the European Unified Patent System and to support the patentees and applicants in possible steps.
You can download a pdf version of this whitepaper in the following languages: english, japanese
Michael Schüller28.09.2022
Michael Schüller is partner at Winter, Brandl – Partnerschaft mbB.
As (German) Patent Attorney and European Patent and Trademark Attorney, he supports clients in the field of mechanical engineering.