01/03/2023
The UPC sunrise period starts today (1 March 2023). The sunrise period is the final stage before the UPC Agreement comes into effect on 1 June 2023.
While cases cannot yet be brought before the Unified Patent Court, a number of important actions can be taken during the sunrise period in preparation for the UPC Agreement entering into force on 1 June 2023.
Most importantly for applicants and patent proprietors, opt out requests for their European patent applications or granted European patents can be filed during the sunrise period.
Opting Out of the UPC
It is now possible for patent applicants and proprietors to file opt out requests for their European rights. An opt out request filed now will have effect immediately when the UPC system comes into effect.
Opting out of the UPC means that national courts, and not the UPC, will have jurisdiction over granted European patents, as is currently the case. For a patent that has not been opted out, actions can be brought before either the UPC or national courts, at least during a 7-year transitional period.
Opting a European patent or patent application out can be done at any point during the transitional period that lasts at least 7 years from the introduction of the UPC (provided no action in respect of a given right is brought before the UPC, as discussed below). The UPC will, in general, only have jurisdiction over granted European patents, though European patent applications can be opted out before grant. However, filing the opt out request during the sunrise period is the only way to guarantee that there is no possibility of the UPC having jurisdiction over a European patent that has already granted.
Opting a patent or patent application out of the UPC means that patent litigation must occur before national courts instead of the UPC. This may be desirable if a patent owner wishes to benefit from any familiarity that they have acquired through past experience with a particular national court, or wishes to avoid their otherwise separate national rights in UPC participating countries being revoked in a single action before the UPC. However, as noted above, it will not be possible to opt out if legal proceedings have already started before the UPC. This is significant as rights that have not been opted out may be the target of speculative revocation actions before the UPC, which would irrevocably tie those rights into the jurisdiction of the UPC. It will be possible for such speculative actions to be brought before the UPC from 1 June 2023.
Opting out does not necessarily close the door on the UPC for good, though. A patent or patent application that has been opted out of the UPC can be brought back into the jurisdiction of the UPC by withdrawing the opt out at any time, provided no litigation proceedings have already been brought before a national court.
Consequently, with the sunrise period begun, rights holders should, therefore, ensure that they have considered whether or not they are happy for their rights to fall under the jurisdiction of the UPC or whether they would like to file an opt-out request for any of their rights.
One risk of a patent falling under the jurisdiction of the UPC is that a patent may be challenged through a central revocation action before the UPC, which could lead to the revocation of their rights in all participating UPC states if the UPC held the patent invalid. If this is seen as a significant risk, it may be preferable for rights to be opted out of the jurisdiction of the UPC. On the other hand, a decision (including a preliminary injunction) of the UPC will have effect for each national right in a participating UPC state. Therefore, the UPC can be a powerful tool for relatively cheaply and quickly enforcing rights over a large market.
A possible strategy may be to opt key rights out initially, with the view to withdrawing the opt out before beginning any infringement proceedings. In some ways, this approach can combine the best of both options – avoiding pre-emptive central revocation whilst making use of quick and powerful court decisions. However, this strategy does carry the risk that were a third party to bring proceedings before a national court, the patent would then be tied out of the UPC for good, as discussed above.
As a practical point, following the recent announcement from the UPC, those applicants who are anticipating opting out a large number of patents are advised to file their opt-outs as early in the sunrise period as possible to ensure that the opt outs are successfully lodged before the UPC enters into force.
At Reddie & Grose we can handle opt out requests during the sunrise period and beyond, and are qualified to represent our clients before the UPC. For any questions regarding unitary patents or the Unified Patent Court, please get in touch with a member of our dedicated UPC team.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
