1 June 2023 marks a significant step forward for patent protection and enforcement in Europe with the commencement of a new unified European patent system comprising:
- A Unitary Patent, providing uniform protection and equal effect across all participating Member States on a one-stop-shop basis.
- A Unified Patent Court (UPC), offering a single, specialised patent court common to all participating Member States.
We previously reported (in 2021 and 2022) on the steps taken towards the establishment of the Unitary Patent and UPC, and the legislative hurdles that needed to be overcome for their operation to commence.
Overview of the Unitary Patent
The Unitary Patent system entered into force on 1 June 2023. It does not replace the existing patent system in Europe, but builds on the European Patent Convention (EPC) to form a new centralised path to grant and protect European patents across the (now) 17 EU Member States that have ratified the UPC Agreement (the participating Member States).
The Unitary Patent gives uniform protection and equal effect (unitary effect) to patents issued by the European Patents Office (EPO) in participating Member States.
Under the existing European patent system, ‘classic’ European patents granted centrally by the EPO under the EPC are validated in selected countries of interest, as a bundle of national patent rights.
The pre-grant phase for a European patent is unchanged by the new Unitary Patent system, which is still administered by the EPO. However the post grant procedure has evolved. Now, within one month of the grant publication, an applicant can choose the form of European patent protections as being a ‘Unitary Patent’ with ‘unitary effect’. The European patent is then elevated to a Unitary Patent with uniform protection and equal effect in participating Member States. The new system is more efficient, insofar as it eliminates the need to apply for and renew a series of national validations in different EU countries. Instead, a single procedure, subject to a single renewal fee in a single currency, is all that is required for a Unitary Patent, which can then be enforced in a single, centralised, litigation system before the UPC.
Overview of the Unified Patent Court
The UPC is a new specialised court common to participating Member States. It comprises a Court of First Instance – divided into local, regional, and central divisions – and a Court of Appeal. The CJEU will hear requests from the UPC for preliminary rulings on questions of EU law.
The UPC has exclusive jurisdiction to hear disputes relating to Unitary Patents. The UPC also has exclusive jurisdiction to hear disputes relating to infringement and validity of classic European patents that have been validated in participating Member States, and any special protection certificate (SPC) issued for a product covered by such a patent, unless those patents have been “opted-out” of the UPC’s jurisdiction.
Before 1 June 2023 classic European patents were enforced on a country-by-country basis. Proceedings were issued in parallel across multiple jurisdictions. This has sometimes led to irreconcilable judgments on validity and infringement. The UPC, as a single Court, is expected reduce the likelihood of conflicting judgments from different national courts as enforcement is effective across all participating Member States.
Proprietors of classic European patents in participating Member States may apply to opt-out of the UPC’s jurisdiction at any time during a “transitional period”. The transitional period, which commenced on 1 June 2023, will last for seven years but may be prolonged with a further seven years subject to review of the Administrative Committee. The opt-out will last for the lifetime of the European patent and any associated SPC unless it is withdrawn. If an opt-out is withdrawn, it is not possible to opt-out again. By opting-out, proprietors of classic European patents eliminate the risk of centralised revocation and the uncertainty surrounding the untested UPC. It is worth noting that Unitary Patents and classic European patents already forming part of an action before the UPC cannot be opted-out.
During the Transitional Period the UPC will share jurisdiction with the National Courts for classic European patents. A competitor or third party has discretion whether to initiate a legal action before the UPC or National Court. After the Transitional Period ends, the UPC will have exclusive jurisdiction for classic European patents.
The UPC has no jurisdiction over patents which have opted out during the transitional period, European countries that have not yet ratified the UPC Agreement, and countries that are not participating in the Unitary Patent system, i.e. non-European members of the EPC. Decisions of the UPC will have effect in participating Member States where the patent has effect.
The UPC has the power to centrally revoke a patent and grant a range of remedies, including preliminary injunctions and final injunctions, that will apply across participating Member States.
Participating Member States
To participate in the new unified patent system, Member States must ratify the UPC Agreement. It is not sufficient to be a signatory state. Only Member States that have deposited their instrument of ratification can benefit from the new system.
To date, a total of 17 EU Member States have ratified the UPC Agreement, This includes: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
Seven Signatory States have not yet ratified the UPC Agreement. This includes Cyprus, Czech Republic, Greece, Hungary, Romania, Slovakia and Ireland, which are expected to deposit their instrument of ratification in the coming years. Despite its harmonising objective, the territorial scope of a Unitary Patent is not automatically extended for countries that ratify the UPC Agreement at a later date. Consequently, there will be different generations of Unitary Patents.
Ireland: the Current Position
Ireland has been a signatory to the UPC Agreement since 2013, however it has not been ratified. A referendum is required because the setting up of the court would require Ireland to agree to the transfer of the forum for relevant patent litigation from the Irish Courts to the UPC. On 23 July 2014 the Irish Government approved the heads of the Amendment of the Constitution (Unified Patent Court) Bill. However, there has been no meaningful progress to date. Last month, Simon Coveney, the Minister for Enterprise, Trade and Employment, suggested the referendum would take place in late Autumn or in Spring 2024 to coincide with the local and European elections. While the latter was stated to be “more likely” lobbying groups are calling for expedited action with some suggesting the Government hold the referendum in November 2023, to coincide with the recently announced referendum on gender equality.
As the only English speaking and common law participating state within the UPC system with a Commercial Court that already plays an active role in the management of life sciences disputes, usually being simultaneously litigated in numerous European jurisdictions, Ireland was in a strong position to host the Life Sciences section of the Central Division of the UPC. Recently, however, the Italian Foreign Office published a press release announcing an agreement with France and Germany to set up the Central Division in Milan. This agreement will be considered by the other UPC signatory states during the next meeting of the Administrative Committee in June 2023.
We will keep readers of our blog updated with the timing of the referendum to ratify the UPC Agreement when there is greater clarity from the Irish Government on timing.
For more information on this topic, please contact John Whelan, Partner, or Sean Dwyer, Solicitor, or any member of the Patent Group in A&L Goodbody’s Commercial & Technology team.