Publications, articles de presse, classements, awards et évènements à venir
Unitary patent and Unified Patent Court: organization and impacts on IP rights
Camille Pecnard participated in a round table on the unitary patent and the JUB for the Lettre des Juristes d’Affaires (LJA) which resulted in an article in their magazine.
When to file opt-out applications?
What does « opt-out » mean? Opt-out is a request to withdraw a European patent or a published application from the jurisdiction of the Unified Patent Court (UPC).
Some criteria for choosing between unitary patent and national validations of the european patent
From 1 January 2023, the period for early uptake of the Unitary Patent begins and related official forms are available on the EPO website. The Unitary Patent system is expected to enter into force on 1 June 2023, when the Unified Patent Court (UPC) should also come into operation, heralding a new era for patent protection in Europe.
Unitary patent and Unified Patent Court: organization and impacts on IP rights
Camille Pecnard and Damien Colombié co-authored an article on the UPC and the unitary patent published this week in the Lettre des Juristes d’Affaires (LJA).
Opt out, stay in: how do we proceed in the case of co-ownership?
With the entry into force of the unitary patent, the unified patent court (UPC) and the associated transitional provisions, it will be possible to escape the competence of the UPC for European published applications and patents without unitary effect (OPT OUT), by the filing of a declaration made by the effective Applicant/Patentee, before the start of proceedings.
The start of the Sunrise Period postponed by two months
The Sunrise Period of the Unified Patent Jurisdiction was supposed to start on 1 January 2023, with a goal of the jurisdiction becoming operational on 1 April 2023. In a press release dated 5 December 2022, the Court states that this timetable is postponed by two months. The Sunrise Period will therefore start on 1 March 2023, with the aim of the Court coming into force on 1 June 2023.
What is the « sunrise period »?
The deposit of the Unified Patent Court Agreement ratification instrument by Germany will trigger the Sunrise period and the entry into force of the UPCA (3 months after the start of the Sunrise period). In anticipation of the opening of the Unified Patent Court (UPC) that is currently planned for April 1st 2023, it will be possible to opt out existing patents and patent application from the jurisdiction of the UPC.
UPC – Protective Letters
Known in some national European jurisdictions, unknown in others, the UPC implements a defensive measure against provisional measures that might be requested by a patentee: the protective letter. Provisional measures that may be requested by a patentee against an alleged infringer include: prohibition of the continuation of the alleged infringement (A62(1)UPCA) and seizure or delivery of the products suspected of infringing a patent so as to prevent their entry into, or movement, within the channels of commerce (A62(3)UPCA).
Opt-out : actions to be undertaken
As you may know, alongside with the set-up of a patent with unitary effect, a Unified Patent Court (UPC) is being established and will be effective at the end of a “sunrise” period (expected in spring 2023). By default, this UPC court will also have jurisdiction over all your European patent applications and granted European patents (in force or expired since less than 5 years) and deriving SPCs.
Opt-out of SPCs
Operation of the Unified Patent Court (UPC) is currently expected for 1st April 2023 (https://www.unified-patent-court.org/news/latest-state-play-view-launch-unified-patent-court), thus launching the sunrise period as soon as 1st January 2023. During this sunrise period, it will be possible to opt-out European (EP) titles from the competence of the UPC. Opt-out will be possible for published EP patent applications, granted EP patents (without unitary effect) and Supplementary Protection Certificates (SPCs) issued for a product protected by a EP patent (A.83 UPCA).
Creation of a European patent with unitary effect and a unified patent jurisdiction
Damien Colombié, Industrial Property Attorney, and Camille Pecnard, Attorney at Law at LAVOIX, come back on the impact of the European Patent with Unitary Effect and the Unified Patent Jurisdiction, in page 5 and 6 of the weekly La Semaine Juridique. To read the full article of La Semaine Juridique, click here.
The final rules for the European Patent Litigation Certificate are being adopted on 15th June 2022
Article 48 of the Agreement on the Unified Patent Court (UPCA) defines the obligation for parties to be represented before the Unified Patent Court (UPC).
Which Nationality for a patent with unitary effect?
The patents’ nationality in case of joint ownership is determined by Article 7 of Regulation 1257/2012 which states:
UPC and opt-out : definition, advantages and drawbacks
The present system of European (EP) patents granted by the European Patent Office, has the drawback that the same patent, validated in several states, may lead to several parallel disputes in these jurisdictions. The Unified Patent package creates a unitary effect for European patents encompassing the states that have ratified the Unified Patent Court Agreement (UPCA – to be found here). That is to say, an EP patent with unitary effect will have the same effects in all the states that ratified the UPCA and where said patent has been validated.
Entry into force of the Protocol on provisional application of the UPC agreement (PAP)
The European Council has just indicated on its website (https://www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id=2015056) that the Protocol to the Agreement on a Unified Patent Court on provisional application (also called PAP) has entered into force yesterday, January 19, 2022.
Austrian parliament choses to ratify the pap-protocol
Yesterday, December 2nd, 2021, the Austrian Bundesrat (second chamber of the Austrian Parliament) approved unanimously the Protocol to the Agreement on a Unified Patent Court on provisional application (the PAP-Protocol) of the Unified Patent Court Agreement (UPCA).
The Protocol on the Provisional Application of the UPC Agreement
The Protocol to the Agreement on a Unified Patent Court on provisional application (the PAP-Protocol) was initially signed on 1st October 2015 to establish a Phase of Provisional Application (PAP) to ensure « a smooth transition into the operational phase and ensure the proper functioning of the Unified Patent Court before the entry into force of the Agreement on a Unified Patent Court ».
The current state of play towards the set up of the Unified Patent Court
The Unified Patent Court Agreement will enter into a provisional preparatory stage once 13 signatory states of the Agreement including Germany, France and the United Kingdom and having ratified said Agreement have ratified or expressed their consent to be bound by the Protocol on Provisional Application (A.3(1) of the Protocol).
The German Federal Government officially ratified the UPC Act of Approval on August 13th.
The publication of the law in the Federal Law Gazette finally puts an end to the legal complications that have been blocking the german ratification process and, consequently, the establishment of the Unified Patent Court (UPC). But this does not mean that the UPC can finally start to operate.
German Federal Constitutionnal Court’s decision
By order of June 23, 2021, the German Federal Constitutional Court (FCC) rejected two applications for preliminary injunction against the Act of Approval that was adopted on December 18, 2020, for the purposes of ratifying the Agreement of 19 February 2013 on a Unified Patent Court (UPC Act of Approval). This decision was highly expected because the process of ratification of the UPC Act of Approval and thus, the establishment of the UPC has been delayed until the ruling of the Court.
Again, and again: the UPC agreement is further challenged in Germany
Although the German Parliament (« Bundesrat ») recently voted in favor of the ratification of the Unified Patent Court Agreement (UPCA) (that we reported here), and despite the political will (see there), the German ratification of the UPCA is again put on hold. The German Federal Constitutional Court (FCC) advised that that two new constitutional complaints were filed on the very same day on which the Bundesrat approved the ratification (18th December 2020). One of the complaint, filed by Düsseldorf lawyer Ingve Stjerna, who already filed an earlier constitutional complaint in 2017, aims at obtaining an interim order to cease the ratification
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Further step in ratification of UPC by Germany
As expected, the second chamber of the German Parliament (« Bundesrat ») has just voted today in favor of the ratification of the Unified Patent Court Agreement and of the Protocol to the Agreement on a Unified Patent Court (click here) The vote was unanimous and the next step is now a formal signature of the Law by the German President. Before the law is signed, we will monitor whether another appeal is filed before the Federal Constitutional Court, as it is expected from entities opposed to this agreement, in particular in the field of free software. We will keep you promptly
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Order N°2018-341 of May 9th, 2018, Regarding Unitary European Patents and The Unified Patent Court
After the ratification of the Unified Patent Court Agreement (UPCA) by the United Kingdom on April 26th, France has just adopted new Order n°2018-341 of May 9th, 2018, regarding Unitary Patents and the Unified Patent Court (the “Order”). While this new law intends to amend the French Intellectual Property Code in view of the upcoming changes with Unitary Patents (“UP”) and the Unified Patent Court (“UPC”), it is supposed to have a wider impact on patent law in France.
5th conference on the Unitary Patent and the Unified Patent Court
The 5th conference on the Unitary Patent and the Unified Patent Court, organized annually by Premier Cercle in association with the EPO, was held in Munich on July 5, 2017. First, an overview over the state of advancement of the implementation of the Unitary Patent and the UPC from a technical, legal and financial point of view was given by a member of the Committee in charge of the Implementation of the Unitary Patent Protection. It appears that the implementation is completed at all levels, and that the system is ready to launch as soon as the ratification process has
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UPC – Timetable Update
The UPC’s Preparatory Committee released an update (https://www.unified-patent-court.org/news/upc-timetable-update-june-2017 ) yesterday confirming the expected delays for the entry into operation of the UPC Agreement. The Committee confirms that the entry into operation of the UPC will not take place in December 2017 as predicted, due to delays in several countries, especially in England, concerning the finalisation of national procedures for the ratification of the UPC Agreement and the participation in the Protocol on Provisional Application. We monitor the issuance of the new timetable that the Committee is to publish.