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Unitary patent & JUB: Sunrise Period update and next steps
The Unified Patent Court (UPC) will be officially launched on June 1, after years of attempts by member states. The entry into force of JUB will also see the introduction of the unitary patent. A so-called Sunrise Period began on March 1, 2023, allowing for opt-outs: i.e., derogations from the JUB’s jurisdiction.
Industrial property: 5 key questions about the European unitary patent
The new system officially comes into force on June 1, with the operational launch of the Unified Patent Court. This simpler, more cost-effective way of obtaining extended protection for innovations in Europe is aimed in particular at exporting SMEs. […]
Safety net(s) in case of a rejection of a request for a Unitary Patent
The Unitary Patent (UP) has to be requested at the latest 1 month after the publication of the grant of a European Patent. However, if certain formalities are not met, such a request for unitary effect may be rejected. The rejection may be pronounced by the European Patent Office (EPO) or by the Unified Patent Court (UPC).
The entry into force of the Unified Patent Jurisdiction is coming, how to be prepared?
Following our dedicated breakfast conference on March 16 in Paris and in view of the approaching launch of the Unified Patent Jurisdiction and the Patent with Unitary Effect, the Journal Spécial des Sociétés has published an article.
Adapting contractual practices to take into account the UPC and the Unitary Patent (co-ownership, opt out, litigation)
The entry into force of the UPC is an unprecedented change in the patent law landscape in Europe. This new system brings about changes in almost all areas of patent portfolio management.
Germany has deposited its ratification for the UPC Agreement
Germany has ratified the UPC Agreement on February 17, 2023, see https://www.unified-patent-court.org/en/news/upc-agreement-ratification-breaking-news.
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).
New on EasyPatent
European validation module (unitary effect patent) is now available EasyPatent now offers a module dedicated to European validations Dedicated to foreign patent extensions, phase commitments and validations, EasyPatent gives you access to an immediate estimate of the cost of the operation directly via IP DATA².
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.
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.
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).
Publication of final judges list
The Unified Patent Court recently confirmed the appointment of the 85 judges (34 legally qualified judges and 51 technically qualified judges) for the entry into force of the UPC Agreement. Gérard Myon has been appointed technical qualified judge in Physics. Gérard Myon - Appointed technical judge Official announcement and full list available here
Double Protection between national Patent and European Patent with or without the unitary effect
The European Patent with unitary effect (“Unitary Patent”) will be introduced soon. The final stage of the preparatory work will be accomplished by the end of this summer and the final missing ratification will then be deposited by Germany.
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.
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:
How to select the European Patent with the unitary effect (Unitary Patent)
Unitary Patent a unique protection for 17 states in Europe With the recent ratification of Austria, the European Patent with unitary effect (“Unitary Patent”) will be introduced soon.
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 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
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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
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New Ratification of The UPCA by The Bundestag – What Is Next ?
The German National Assembly (Bundestag) has now adopted the law for ratifying the Unified Patent Court Agreement (UPCA) with the required majority. As a next step, the Bundesrat, the second chamber, has to approve the law. As the Bundesrat did not have any objections previously, it is likely that the law will pass with the required majority. The next session of the Bundesrat is planned for 18 December 2020, however the schedule of the session is not yet fixed. After the vote of the Bundesrat, the government and the president have formally to sign the law.
The United Kingdom (UK) has now officially withdrawn from the Unified Patent Court Agreement (UPCA)
The UK has today notified the council secretariat about their withdrawal of their ratification of the UPCA and the Protocol on Privileges and Immunities of the Unified Patent Court. The UK considers that the withdrawal shall take effect immediately. The UK has already announced earlier this year that they do not longer wish to be a party to the UPCA. However, until now, it was not clear when the UK will proceed with the withdrawal. The Preparatory Committee of the UPC will now discuss the consequences of the UK withdrawal and will see how to move forward. It will then
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German Federal Constitutional Court upholds the constitutional complaint regarding the UPC for lack of qualified majority vote: is there still a chance for the UPC?
In its order released on 20 March 2020, the Federal Constitutional Court (FCC) holds the act of approval to the Agreement on a Unified Patent Court (“UPC”) void due in particular to the lack of a qualified majority vote. While this decision delays the ratification of the UPC Agreement by Germany even further, the future of the UPC seems more than ever uncertain. However, in upholding the constitutional complaint on this ground, a future ratification of the UPC Agreement by Germany still remains possible.
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.
The UK ratified the Unified Patent Court Agreement on 26th April 2018
The UK ratified the Unified Patent Court Agreement (UPCA) on 26th April 2018 despite the Brexit vote and the currently ongoing negotiations for the UK to leave the UE. Only the German ratification is now missing for the system to go alive, as France has already ratified the UPCA. However, Germany’s ratification has been further delayed since the constitutional complaint against the ratification of the UPCA (End of March 2017). If the German Federal Constitutional Court (FCC) decides not to admit the complaint, the German ratification procedure can resume (within approx. 6 months), still possibly before Brexit day (29th March
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Unitary Patent – Lithuania Completes Its Ratification Formalities
According to the website of the Council of the European Union, Lithuania has completed its ratification formalities on 24 August 2017. This is the 14th ratification following that of Estonia which joined the unitary patent system on 1 August 2017. To be complete, the unitary patent system requires 13 ratifications, including France, Germany and the United Kingdom. France is already part of the system since 14 March 2014. However, according to the Preparatory Committee, the United Kingdom and Germany still have some hurdles to overcome before the unitary patent system enters into force (you can see our previous posts on
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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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UPDATE ON THE UK RATIFICATION OF THE UPC
The process of ratification of the UPC by the UK seems to be back on track, following the recent UK elections. Orders on Privileges and Immunities for the Unified Patent Court were laid in Parliament under the International Organisations Act 1968 today (Click Here and Click Here). Separate legislation will be laid in the Scottish Parliament in due course. The Orders are affirmative orders, which means they will be debated in each House of Parliament. Separately the Scottish Order will be debated in the Scottish Parliament. They will also require Privy Council approval. Once this legislation has been passed the
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Service of written pleadings, orders, decisions and other documents before the UPC
An action according to Article 32(1) of the UPC Agreement is introduced when the plaintiff lodges a corresponding Statement or Application at the UPC Registry (Rule 4 RoP). Then, Chapter 2 of Part 5 of the Rules of Procedure (RoP) provides for a number of provisions related to the service by the Registry of all documents related to this action (Rule 6 RoP). This Chapter 2 (Rules 270-279 RoP) is subdivided in four sections.
German Court delays UPC Ratification
The German Constitutional Court (Bundesverfassungsgericht) has delayed the ratification of the Unified Patent Court (UPC) Agreement (http://www.lto.de/recht/nachrichten/n/bverfg-stoppt-eu-einheits-patent-verfassungsbeschwerde/) as became known today. The Constitutional Court has asked the Federal President of Germany to put the process of ratification on hold following a constitutional complaint filed by a private person. The Office of the Federal President informed the court that the process was “suspended” following the request. The constitutional complaint relates to the law ruling the Unified Patent Court, but as the two are closely related, the entry into force of the Unitary Patent has also been put on hold. At this
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Co-ownership/licensing agreements – Impact of UPCA
The Agreement on a Unified Patent Court (“UPCA”) will have a significant impact on agreements on Patents, especially on co-ownership and licensing agreements. The Parties to a co-ownership or licensing agreement shall take into account the provisions applicable to European patents with unitary effect (namely Unitary Patents or “UP”) and those applicable to the Unified Patent Court (“UPC”).
UPC launch in December 2017: dream or reality?
As we have seen, the UK Prime Minister has surprisingly called earlier last week for General Election to take place on 8 June 2017. Authorized by Parliament on 19 April 2017, this Election is likely to freeze the Parliamentary business very soon.