LS&HC Horizons 2022 - Flipbook - Page 47
Hogan Lovells | 2022 Life Sciences and Health Care Horizons
47
Patents, Litigation, and Beyond
Unitary patent and Unified Patent Court – New opportunities and risks for your intellectual property rights in the EU
What is it about?
Why are these changes already relevant for you?
The unitary patent (UP) and the Unified Patent Court (UPC) together
form a new, unified European patent system. In this new system,
unitary patents will provide another way to obtain uniform patent
protection in several participating EU member states, in addition to
“classical” European patents (EPs, batch patents) and national patents.
The unitary patent is a “European patent with unitary effect”. It confers
protection throughout the territory of the participating member states.
The Unified Patent Court will be a common court of all participating
member states and will in particular have jurisdiction for:
• The new unitary patent system will affect all European patents and
patent applications.
• U
nitary patents, i.e., European patents with unitary effect,
• “classical”
European patents, unless the patent owner
decides to “opt out” for these patents, and
• s upplementary protection certificates (SPCs).
In contrast, the UPC will not have jurisdiction over national patents.
The UPC will be a unified court whose judgments will have direct
effect in all participating states. Before the UPC, both the infringement
and the validity of the respective patent in suit will be decided in a
single proceeding. The UPC is organized on a decentralized basis and
will have court locations in several European countries, such as Paris,
Germany (Dusseldorf, Hamburg, Mannheim and Munich), Brussels,
Milan, and The Hague.
When will the new system go "live"?
It is expected that the UPC Agreement will enter into force in the
second half of the year (2022). With the entry into force of the
Agreement, patents with unitary effect can be filed. European patent
applications that are already pending can be converted into unitary
patents. European patents already granted will also fall under the
jurisdiction of the UPC, unless an “opt-out” is declared.
• Strategies for filing and enforcing patents need to be reconsidered
and adapted. In particular, patent owners/applicants have to choose
between the “classical” European patents (EPs), national patents
and/or the European patent with unitary effect.
• In addition, patent owners/applicants need to be clear about
whether an “opt-out” should be declared for granted patents and
pending patent applications.
“Opt-out”
During a transitional period, patent owners and applicants will be
given the option to exclude “classical” European patents (from the
jurisdiction of the UPC (opt-out). This means that national courts
will continue to have jurisdiction over national patents and those
“classical” European patents (EPs) for which the owner/applicant
has declared the “opt-out”. However, such an “opt-out” is no longer
possible as soon as an action is pending at the UPC. In addition, as
long as national invalidity proceedings have not been initiated in any
participating state, the owner/applicant can withdraw from the “optout”. The patent in question then “returns” into the unitary patent
system. In order to ensure that patent owners/applicants initially
retain the possibility to “opt-out” (before, e.g., an invalidity action is
filed before the UPC), the “opt-out” can be declared during a so-called
“sunrise period”, which will begin three months before the official
start of the unitary patent court system (presumably
in summer 2022).
