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Jurgen Duyver

Important changes to the European Patent system

As you may have heard, 2022 – 2023 will become a time for important changes to the European patent system. As these changes will also affect existing European Patents and European Patent Applications (European Patent Rights), we inform you of these changes by this communication.

A new patent Court in Europe, the Unified Patent Court (UPC), will come into existence, likely the first half of 2023. This UPC will be a common patent court, whose decisions on European Patents Rights will be enforceable in all the EU countries that wil have ratified the international UPC Agreement (UPCA), hereinafter UPC countries[1]. For example, the UPC will be able to decide centrally on questions regarding the validity of and infringement on European Patent Rights. At present, such disputes can only be brought before national courts, who decide with respect to their respective country. For example, under the current system, invalidation of a European patent is to be requested in each country separately after the opposition period at the European Patent Office, while the UPC will have the power to revoke it in all UPC countries. The creation of the UPC thus constitutes a major change and will further strengthen harmonization of patent law in the European Union.

Initially, both national courts and the UPC will be able to decide on questions relating to European Patent Rights. Ultimately, in general only the UPC will have the power to decide on European Patents Rights in UPC countries.

However, since most European Patents Rights have already been filed and/or granted in a time where no UPC existed or was even debated, the owners of such European Patent Rights are now faced with a situation that was unimaginable at the time of filing their application. To compensate for this change, these owners will have a chance to maintain their European Patent Right strictly under the current system of national courts by requesting a so-called “opt-out” from jurisdiction of the UPC. It will  then be no longer possible for the owner or a third party to bring an action relative to an “opted-out” European Patent Right before the UPC, while the situation with respect to the national courts will remain the same. However, if an action relative to a European Patent Right has already been brought before the UPC, an opt-out regarding the same European Patent Right will no longer be possible. In other words, those who wish to avail themselves of the opportunity to “opt-out” a certain European Patent (Application), are advised to take timely action! Furthermore, withdrawal of an “opt-out” is possible, provided that certain conditions are met.

Consequently, owners of a European Patent Right should from now on focus their attention on the option to opt-out such European Patent Rights from jurisdiction of the UPC. Not only opt-out decisions should be carefully weighed for each European Patent Right in the portfolio, but such decisions should ideally be taken before the UPC comes into existence.

As the opt-out decision is quite complex and strategic, do not hesitate to contact your attorney, to review in detail the relevance and impact of the choice and set out guiding principles for an informed and efficient choice. In addition, our experts are available for a specific workshop to discuss with you the best strategy to be adopted for your organization.

Contact one of our experts for tailor-made advice.

[1] The following countries are expected to become UPC countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.

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