New UPC timetable
The committee preparing the start of the Unified Patent Court (UPC) has just published a preliminary timetable for when the Court can come into existence. As a patent holder or a licence holder, you must be particularly aware of the following:
- May 2017: the UPC's institutions will formally come into existence
- At the beginning of September 2017: it becomes possible for patent holders to submit applications to opt out of the UPC's jurisdiction (the so-called sunrise-period)
- December 2017: the UPC becomes operational and legal proceedings can be instituted before the Court
It was uncertain whether the UK would ratify the Unified Patent Court Agreement after it became clear that the UK would leave the EU. But on 28 November 2016, the UK announced that it would join the UPC. It means that it is realistic that the necessary ratifications can be made during spring 2017.
The UPC brings big changes for patent holders and high-tech companies. Below, we list some of the most important issues that you should be aware of when the scheme comes into effect.
Should you as a patent holder use the scheme?
As a patent holder, you should particularly note that in general the UPC will have jurisdiction in respect of all important types of legal actions relating to European patents (all patents issued by applying to the European Patent Office (EPO) as well as all relating supplementary protection certificates). This is the case in respect of for example invalidity actions and infringement actions and the UPC will have jurisdiction to pass judgments with effect for all Member States where a European patent is in force. National patents and utility models (obtained by applying to the national patent authorities) are not subject to the jurisdiction.
It makes it easier for a patent holder to enforce a European patent across borders. The current situation is that if infringement has taken place in different countries, you have to use the different national courts to a great extent. In future, it will become possible to enforce your right before one court (the UPC) with effect for all Member States.
It also means that a holder of a European patent can be sued through the UPC with the claim that a patent must be found invalid with effect for all Member States where the patent is in force.
As a patent holder, you will be able to opt out of the UPC's jurisdiction in respect of your European patents for a transitional period of seven years (with the possibility of extending the period). The opt-out applies as long as the patent is in force.
The possibility of opting out of the UPC's jurisdiction is lost if a legal action regarding the patent is brought before the UPC before it becomes possible to opt out. According to the published timetable, any opt-out requests may be submitted from three months before the UPC opens its doors, meaning at the beginning of September 2017.
As a patent holder, you should therefore go through your patent portfolio to decide whether there is any need to remove patents from the system. If you do not actively opt out your patent of the UPC's jurisdiction, the patent will be subject to the Court's jurisdiction from December 2017 according to the preliminary timetable.
The positions of licensees
As a licensee, you should note that only exclusive licensees will be able to take legal actions before the UPC unless otherwise agreed. This is different from Danish law where all licensees are generally permitted to take legal actions to enforce the patent.
Licensees should also note that they do not have any independent right to demand that a patent subject to a licence agreement opts out of the UPC scheme. Only patent holders have such right.
The general recommendation is that these issues should be clarified when drafting the licence agreement.
Plesner follows the UPC closely
Plesner will follow the developments and will regularly provide updates regarding the UPC and the continued process towards the expected commencement in December 2017.
Click here to read more on the UPC's website