Tag: Transitional period

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The key dates of the UPC’s timetable: from the entry into force of the UPC Agreement to transitional period

What should you know about the Unitary Patent?

The entry into force of the UPC package follows a complex timetable. The UPC goes in fact through 3 phases and periods before its start of operations.

When will UPC Agreement enter into force?

The UPC Agreement will enter into force on the 1st day of the 4th month after the deposit of the 13th instrument of ratification. The instruments of ratification must include Germany, France and the United Kingdom.

Germany, France and the United Kingdom’s ratification are indeed a prerequisite to the UPC Agreement entry onto force. This is because they were the 3 Contracting Member States in which the highest number of European patents had effect in 2012.

At the end of October 2017, 14 countries had ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, and Sweden. Germany and the UK are currently in the process of ratifying the UPC Agreement.

The Preparatory Committee is thus working under the assumption that the Court will become operational in the first quarter of 2018.

What are the Provisional Application Phase and the Sunrise Period?

The Provisional Application Phase will start when 13 Member States that have already signed the UPC Agreement and whose Governments have received Parliamentary approval to ratify the UPC Agreement, approve the Protocol to the Agreement on a Unified Patent Court.

It will allow for some parts of the UPC Agreement to be applied early. The UPC Committees will be able to take final decisions on the practical set up of the Court. They will -for example- be able to finalise the recruitment of judges and the testing of the IT.

The Provisional Application Phase is scheduled to last for 6 months. The last 3 months, also known as the Sunrise Period, will specifically allow European patent proprietors to start opting out. The opt-out is the procedure by which proprietors or applicants for a European patent can withdraw their patents from the exclusive competence of the Unified Patent Court (See the Opt-out: Essential Guide)

Currently, the Preparatory Committee chairman considers that the Provisional Application Phase should start in autumn 2017. The Sunrise Period could then follow at the beginning of 2018.

What is the transitional period?

The transitional period will last 7 years starting after the entry into force of the UPC Agreement. The UPC Administrative Committee may renew it for a further 7 year. The transitional period is likely to start in the second quarter of 2018. It will then last up to the second quarter of 2025.

During this period the UPC will share jurisdiction with national courts over actions for infringement and revocation of a European patent. Hence, any holder of or applicant for a European patent will be able to initiate actions before national courts. This will be regardless of whether the European patent or application concerned will have been the subject of an opt-out.

Patent holders will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. The UPC will have exclusive jurisdiction over Unitary Patents.

If the transitional period is not renewed, the UPC will have perpetual exclusive jurisdiction over Unitary Patents and European patents. Opted out European patents will not come back under the UPC exclusive competence once the transitional period is over.

Summary Diagram:

drawit-diagram-5

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A new update on Article 83 and its opt-out by the Preparatory Committee

Supplementary Protection Certificate

The Preparatory Committee published an update on Article 83 of the UPCA and the possibility of opting out. As a reminder, Article 83 states that:

“(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.

(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.

(5) Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a broad consultation with the users of the patent system and a survey on the number of European patents and supplementary protection certificates issued for products protected by European patents with respect to which actions for infringement or for revocation or declaration of invalidity are still brought before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to prolong the transitional period by up to seven years.”

The Q&A  of the Unified Patent Court’s website clarifies the provisions contained in article 83(1) and 83(3), and looks at whether Article 83 affects the exclusivity of the UPC’s jurisdiction and the duration of an opt-out.

What does the Preparatory Committee say about Article 83 and the exclusivity of jurisdiction?

The issue was whether Article 83 only concerned the exclusive jurisdiction of the UPC with the consequence that after the opt out the UPC would share its competence with national courts, or whether Article 83 should be read as totally removing the UPC’s competence once the patent was opted-out.

The Preparatory Committee makes clear that the intention of the legislator is that Article 83 gives the opportunity to patentees to  remove their patents entirely from the jurisdiction of the UPC. Therefore once the patent has been opted out, the parties only choice of forum will be national courts.

And what about the duration of the opt-out?

This was the second main issue about opt-outs. In fact with the present drafting of Article 83 (1) it is difficult to know whether the opt-out from the jurisdiction of the UPC for a classic European patent is only effective during the transitional period or whether, once it has been notified during the transitional period, it is effective for the whole life of the patent.

The Preparatory Committee states in unequivocal terms in the Q&A that the opt-out is valid for the whole life of the patent rather than just for the transitional period. Therefore the transitional period only corresponds to a period of time during which patentees have the possibility to either bring their actions for infringement or revocation before national courts, or decide to opt-out of the UPC so that their patents are only under the jurisdiction of national courts. The transitional period consequently does not impact the length of the opt-out but determines when the opt-out can take place, i.e. within the seven years (more if prolonged) set out by the UPCA.

See our post on the Transitional period and the Opt-out here.

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The Transitional Period and the Opt-out

Supplementary Protection Certificate

 

I. The transitional period:

The UPC Agreement provides for a transitional period of seven years, which may be prolonged up to a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.

During the transitional period the following options will be possible regarding European patents without unitary effect:

 

  • · A proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into the register. It will be possible to withdraw such an opt-out at any time as stated in Article 83.3 of the UPC Agreement

 

There will be no possibility to opt-out a European patent with unitary effect.

 

 

II. The Opt-out system in details:

 

(A) The opt-out system and its relationship with the European Patent and the European Patent with Unitary Effect:

  • The Opt-out and the European bundled patent:

Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.

  • The unity of application and the Opt-out system:

The unity of an application and of the patent, in case of several applicants or several proprietors, is a basic principle of patent law as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.

  • The Opt-out and the UPC’s jurisdiction:

Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.

  • The Opt-out system, the European patent and the European patent with unitary effect:

If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted. An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.

 

(B) Registration of Opt-out by the UPC’s Registry:

  1. Opting-out fee:

The Contracting Member States in the Preparatory Committee have not yet decided if there will be an opting-out fee.

       2.Registration of the opt-out:

In the interest of legal certainty for both the proprietor or applicant and third parties, it will indeed be important that the opt-out is entered into the Registry and becomes effective on the day the notification of the opt-out is received by the Registry. The Contracting Member States and the Preparatory Committee do still have to look into the necessary arrangements to achieve this.

 

(C) Opt-out and the choice of forum during the transitional period:

Pursuant to Article 83.1 of the UPC Agreement during an initial period of seven years after the entry into force of the UPC Agreement any proprietor of a European patent or any applicant can initiate proceedings, in particular infringement proceedings, before national courts, regardless of whether the European patent or application concerned has been the subject of an opt-out.

But will it be possible to initiate a revocation action in the UPC if someone else has already initiated an infringement action before the national courts? It will normally be possible for a party to initiate a revocation action before the UPC even if the proprietor of the European patent has initiated an infringement action before a national court. If the proprietor of the European patent wants to avoid a revocation action before the UPC he needs to make use of the possibility to opt-out from the jurisdiction of the UPC.