LS&HC Horizons 2023 - Flipbook - Page 37
Hogan Lovells | 2023 Life Sciences and Health Care Horizons | Patents, Litigation, and Beyond
37
Introduction of the Unitary Patent and the Unified Patent Court
The introduction of the Unitary Patent
and the corresponding Unified Patent
Court (UPC) system is set to transform
the patent litigation landscape in the
European Union (EU). It also requires
a review of patent prosecution strategies
in countries covering the EU. This
is what you need to know:
What is the Unitary Patent (UP)?
The UP is a “European Patent with
unitary effect”, i.e., a European Patent
granted by the European Patent Office
which, after grant, is given unitary effect
for the territory of the participating
member states at the request of the
patent proprietor. In other words,
the Unitary Patent is a “single patent
granted for the participating member
states” with a single court having
jurisdiction over its effects.
In which states will the Unitary
Patent be effective?
Initially the Unitary Patent will be valid
in 17 EU member states, including
Austria, Belgium, Bulgaria, Denmark,
Estonia, Finland, France, Germany,
Italy, Latvia, Lithuania, Luxembourg,
Malta, the Netherlands, Portugal,
Slovenia, Sweden. It may potentially
be extended to more EU member
states. The costs for validating a UP
will correspond to the costs of validating
Christian Stoll
Partner, Hamburg
a European patent in four countries.
Thus, patentees can obtain a broader
geographical coverage at relatively
lower costs.
What is the UPC?
The UPC is a supranational court
whose decisions will have direct effect
in all 17 countries that have ratified
the Unified Patent Court Agreement
(UPCA). The UPC’s jurisdiction will
encompass the classical European
Patents for designated participating EU
Member States (so long they are not
“opted out”) as well as Unitary Patents.
The UPC will be competent for, inter
alia, patent validity and infringement
cases for the mentioned patents and
aims to provide a more streamlined and
consistent approach to patent litigation
where one decision will have effect in all
participating Member States.
Are the UP and the UPC
mandatory?
The Unitary Patent and the UPC are
currently only optional. For existing
European patents, patentees have the
choice to bring infringement actions
either before the UPC or the national
courts for a transitional period of seven
years. For existing European patents
and applications, patent holders can also
decide to declare an “opt-out” with the
Dr. Anna-Katharina Friese-Okoro
Partner, Hamburg
effect that the UPC has no jurisdiction
for these patents. Further, patentees
may still apply for national patents, for
which the UPC will have no jurisdiction
now and in the future.
When will the UPC system start?
The Unitary Patent and the UPC will
start on 1 June 2023. There will be a
sunrise period starting on 1 March 2023,
in which patentees may declare an “optout” for existing European patents and
applications from the jurisdiction
of the UPC.
What actions are required
by patent holders?
In view of the new system, patent
holders will be required to revisit their
patent prosecution and enforcement
strategies for the EU countries. In
particular, patent holders will have to
decide whether they prefer to “opt-out”
their existing European patents and
whether their patent portfolio should
also include Unitary Patents in the
future. Also, license agreements will
have to be adjusted to the rules of the
new system.
Visit our Topic Center to
learn more about the UPC
