UPC starting gun fired – new court projected to open its doors on 1 April 2023

Marks & Clerk calls on patent owners worldwide to assess their options when it comes to the new EU Unitary Patent package

Leading intellectual property firm, Marks & Clerk, has issued a call to action to patent owners in the UK and around the world. According to a roadmap issued on 6 October, the widely anticipated Unitary Patent package has a provisional start date of 1 April 2023, meaning patent owners must assess their rights and protections in line with the new package, and take action accordingly. Whilst the date is not set in stone and may still be pushed back, it is a definite statement of intent and looks realistic.

The Unitary Patent package has two components: the Unified Patents Court (UPC) and the Unitary Patent (UP). Once the UPC goes live, it will become possible to pursue suspected patent infringers centrally, in order to obtain judgements that are directly enforceable in the block of EU states that have signed up to the new system. The Unitary Patent will cover the same group of EU states and will be obtainable via a bolt-on to the long-established European patent application process, which will otherwise remain unchanged.

Such a definitive declaration is a landmark moment in the creation of a system that has been discussed by European countries since the 1960s and there is a palpable sense of excitement that it is now within reach.

Much has been said about the opportunities and risks associated with this new system but it is widely expected to offer a useful weapon in the armoury of the savvy patent strategist.

Speaking about what this means, Simon Mounteney, Managing Partner (Europe) at Marks & Clerk, said: “The new system will offer a significant reduction in costs for innovators who seek protection in more than a handful of EU states as they will no longer have to take parallel action in multiple countries. Likewise, where disputes and patent infringement are an issue, the claimant will only need to commence infringement proceedings in a single court in order to obtain a single pan-European injunction (preliminary or final) across several countries.”

The new system will not be without its risks, though. Patents will be exposed to the jurisdiction of a newly established court operating under new rules, and the outcome of proceedings may therefore be difficult to predict for some time. Patents falling under the jurisdiction of the UPC will also be vulnerable to central attack, which may not sit comfortably for some owners whilst the fledgling system is finding its way.

And this is not just an issue for those who plan to obtain UPs: the UPC will not only have jurisdiction over UPs, but also over European patents that have been granted under the existing system. Luckily, patent owners will have the option to opt their patents out of the UPC jurisdiction during a three-month “sunrise” period that is expected to start at the beginning of January.

Mounteney added: “The new system will fundamentally change the way patent owners can use existing and future patents in Europe. Although 1 April seems some way off, they need to start thinking about the effects – and the associated costs – sooner rather than later, and it is critical to start thinking about opting their patents out of the system straight away, if they haven’t started this already. Preparing for these changes could be time-consuming for owners of large portfolios, as the opt-out rules will require potentially extensive due diligence to be performed in order to ensure things are done correctly.“