A Unified Patent Court (“UPC)” has finally been approved in Europe, which has been in the works for quite some time.
It will provide a central court from which a European patent may be enforced – or revoked – and its effect will be binding on all participating countries. Not all EU countries have signed on to the UPC yet. As of today’s writing, the participating countries are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden. More may be added in the future as the UPC progresses.
The UPC provides a streamlined, efficient way to enforce a European patent across multiple countries. However, it also puts all the patent eggs in one basket, making it vulnerable to invalidation in one location that would have effect in multiple countries.
For this reason, there is an option for currently existing European patents to opt out of the UPC. If opted out, the European patent would be subject to enforcement and challenge in individual countries on a country-by-country basis, and the decision of the national court would be binding only in that country.
The decision to opt out of the UPC is therefore a strategic one that should be carefully considered for each patent, in consultation with patent counsel. It should also be made soon – the sunrise period in which to opt out expires June 1, 2023.
The opt out procedure involves confirming patent ownership, all owners signing a mandate providing instructions to opt out, and the mandate must be processed and published in the register to be effective. Given the short amount of time and large anticipated volume of requests, it is advisable to provide instructions as soon as possible.
This post was written by Jessica Mozingo