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The Unitary Patent – how far away is it now?

13 January 2016

Unitary Patent (UP)

The UP draws ever closer, and recent events suggest early 2017 is the hot favourite for commencement. If you haven’t considered the ramifications of the UP for your business yet, now is the time to start.

The Select Committee, who set the rules and fees for the UP, recently announced that their work was complete and the EPO announced that they now have everything in place operationally in order to administer the UP

The UP is all ready to go, but legally a new court, the Unified Patent Court must be operational before the UP becomes an option. The Court isn’t ready yet but we also have recent news that suggests that is about to change.

The Unified Patent Court (UPC)

The UPC will have three stages, a “preparatory” phase, a “provisional” phase in accordance with a protocol, and the “operational” phase in accordance with the Unified Patent Court Agreement (UPCA).

We have been in the preparatory phase since 2013. During this phase none of the institutions of the court have existed legally and no official binding actions according to the UPCA can be made. However various groups under the administration of a “Preparatory Committee” have been able to progress many of the needed actions into a final form that can be rubber stamped by the Court.

In the provisional phase, institutions of the Court will be brought into legal existence, and some parts of the UPCA will come into force, but the Court will not be “operational” as it will not accept or hear cases. “Opt outs” will be able to filed at some point during this phase so that they can take effect from the first day of the operational phase.

When the operational phase commences, all of the UPCA will be in force, the court will receive and hear cases and the UP will be available for newly granted European Patents.

The Preparatory Committee recently set out the schedule for their remaining meetings. They plan to have four more meetings with the last being in June 2016. It seems that they consider that they will be ready to move to the provisional period shortly after this. Consequently whilst it is unlikely that “opt outs” could be registered before June 2016 it does currently seem probable that they will be registrable at some point later in 2016.

The chairman of the Preparatory Committee stated in a recent interview that the provisional period would be “at least 6 months”. Legally the operational phase must start on the 1st day of a month and therefore these recent statements would appear to rule out the operational phase starting in 2016. The committee’s aspiration is to be operational at “the start” of 2017. 1st January 2017 and 1st February 2017 are possible start dates that fit with current plans and announcements (although the 1st January is public holiday throughout most of Europe).

This will mark the beginning of a new era in the European patent system providing simpler and more cost effective enforcement of patent rights throughout Europe.

What are the uncertainties?

Action or inaction by national governments and the speed of completing administrative actions for the court to be ready could all affect the dates at which the new phases begin.

The dates that both the provisional and operational phases begin will be determined by actions by national governments (the start dates are triggered by a certain number of signatures of the protocol, depositing ratifications of the UPCA etc.). Theoretically, it is possible that if countries (or just one of the UK or Germany) were to be slower or faster than expected then the above timeline would be affected. However, there appears to be some confidence that the requirements from sufficient national governments will be in place before they are needed and we assume there is a plan to work with particular countries to control the start dates so that they accord with the completion of administrative actions.

The largest uncertainty is how long the provisional period will need to last to complete all the actions required for the Court to operate effectively. How long will “at least 6 months” be in practice? One task that will need to be completed during the provisional phase is the recruitment and training of judges. If there is an insufficient number or calibre of judges in place the Court will not be ready to be operational. There are reasons to be optimistic, however, as a large number of judges have posted an expression of interest training has already begun and it would be possible for the UPC to begin with a relatively small number of judges and grow in response to demand.

If you require further information on anything covered in this briefing, please contact your usual contact at the firm.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, January 2016