Date: 20 February 2023
Germany has now ratified the Unified Patent Court Agreement and, according to its terms, it comes into force on the first day of the fourth month following this final ratification, i.e. 1 June 2023.
The "sunrise" period for opting out began on 1 March 2023. From that date, owners of existing patents (and indeed patent applications) have been able to opt individual patents out from the jurisdiction of the new court. The reason patent proprietors may wish to do this is because the new court has the power to revoke a European Patent and, whereas we have no reason to suppose it will be any more ready to do so than, say, the German Patents Court in Munich, we do not yet know how pro-patentee or pro-public interest the new court may be. Many patent owners will choose to opt out and later, if they wish to use the court to enforce their patents across multiple jurisdictions, they will opt back in and file suit provided that proceedings have not already been started in a national court. There is a risk that a prospective infringer might do this – e.g. file a nullity action or an action for a declaration of non-infringement in, say, Italy, and thereby torpedo a patentee’s option to use the new court. The new court is designed to be very much quicker than the courts of Italy and other states.
UK patents obtained through the EPO will remain immune to revocation by the new court. They will continue to be granted by the EPO, but they can only be revoked by the UKIPO or the UK courts.
The new court will require documents to be lodged using digitally signed strong authentication. This is a major headache that has caused a 2-month delay in the start of business.
At Maucher Jenkins, we have obtained and tested suitable smart cards and we have successfully lodged opt-outs in the court's test online Content Management System. But the test window is brief, and the system for digitally signing is time-intensive. We are asking clients to give us their opt-out instructions in good time. We will not be able to guarantee that requests for opt-outs received close to the 1 June date will be processed by that date. There will be a risk that third parties will file revocation actions as soon as the court opens for business.
Many are saying "surely if a third party wants to revoke, they would do so in a national court like Germany?".
We say "the fees before the new court are the same or similar, and many who missed the window for opposition will grasp the opportunity to take a pop at patents for not much more expense (albeit with the downside risk of 'loser pays' costs)."
Meanwhile, we relish the opportunity to register newly granted patents for "unitary effect". Unitary Patents will be available from 1 June, and we are already preparing extra-low-cost fixed-price translations to take advantage of the new territorial coverage available for less than the present cost of validation of a European patent.