To opt-out or not? The UPC will change the rules of the game in the European patent field possibly as soon as next fall
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Partner
Finland
As a partner at our Helsinki office, I lead our Finnish Intellectual Property Group. My practice encompasses IP litigation, protection and commercialisation of IP rights, and regulatory advice, particularly in the Life Sciences, Medical Devices, and Food & Beverage sectors.
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Early this year it became clear that the long-pending reform of the European patent system is finally coming to fruition. With the reform, the unitary patent which crosses geographical borders (a European patent with unitary effect) is being established as the new alternative to the traditional dual scheme of European patents and national patents. In addition, the new Unified Patent Court (UPC) will be established and will have jurisdiction to settle patent disputes in all Contracting Member States. Before the UPC opens its doors, companies should at least decide whether to “opt-out” of the court’s jurisdiction with their European patents.
What changes?
European patents will be applied for in the same way as previously. However, even if the unitary patent itself is not yet of interest to companies, the reform will already have an impact on companies' patent strategies due to the new court.
The reform survived Brexit and Germany’s constitutional complaints and the final stages of preparation are now under way. From inception, the UPC will involve 17 EU countries, including Finland. Once the Contracting Member States are convinced that the Court is ready to operate, Germany will deposit an instrument of ratification of the UPC Agreement. Under the terms of the UPC Agreement, the Agreement will begin to apply on the first day of the fourth month following ratification. Optimistic estimates suggest that this could perhaps happen as early as October of this year. According to the UPC's website, the launch is estimated to take place either in the fourth quarter of this year or early next year.
The reform will affect all companies operating in fields that involve patents. All newly granted unitary patents will also cover Finland, which will increase the number of patents valid in Finland. This in turn increases the risk of patent infringement. Thus, companies should ensure that they are prepared for this change.
Patenting companies should carefully consider whether to apply for unitary patents in their patent applications. Furthermore, they should decide, regarding their existing traditional European patents (and Supplementary Protection Certificates), whether to opt-out of the jurisdiction of the UPC over such existing patents.
In the long term, such a choice will no longer be possible and all disputes concerning traditional European patents will eventually be settled at the UPC. Unless a company has opted out of the UPC's jurisdiction over a patent, the UPC and the national courts will have parallel jurisdiction for a transitional period of seven…
