On January 18, Austria has deposited its ratification instrument for the protocol relating to the preliminary application of the Agreement on a Unified Patent Court (UPCA). With this, a range of articles of the UPCA have provisionally come into force, which allow the preparation of the operation of the Unified Patent Court (UPC). In particular, the appointment procedure for judges can be conducted and the court’s Rules of Procedure can be adopted.
The UPCA’s full and final entry into force depends upon Germany’s deposit of its ratification instrument, which can be counted on once the court’s operability is in sight (for the protocol, Germany had deposited its instrument in September 2021 already, but it withheld the instrument for the UPCA).
With the entry into force of the UPCA, EU regulations will become applicable (1257/2012/EU and 1260/2012/EU), on the basis of which the European Patent Office (EPO) may grant European patents with unitary effect. These patent do not – like European patents known so far – split into a bundle of national IP rights, but instead form a unitary IP right for a plurality of EU member states (next to Germany e.g. France and Italy, the list depends in detail on the further ratification process).
The UPC will then have exclusive jurisdiction for infringement and revocation proceedings relating to both European patents with unitary effect and other European patents, unless the owners of the latter do not withdraw their patents form this jurisdiction by an “opt out declaration”.
However, such an opt out declaration will be only be effective, if it is entered in the relevant register before any proceedings relating to the patent at issue have commenced before the UPC. Therefore, a swiftly launched revocation action may bar such an opt out. To address this problem for patent owners, the current draft of the Rules of Procedure provides for a possibility to submit opt out declaration before entry into force of the UPCA.
It is thus advisable for holders of ordinary European patents to make up their mind, if and for which of their patents opt out declarations seem reasonable, once the timeframe for their submission has commenced (upon adoption of the final Rules of Procedure). This decision largely depends on the UPCA’s advantages of cross-border litigation on the one hand and potentially better chances to defend the patent against revocation actions on national level on the other hand. Both aspects can hardly be judged for all cases in the same manner, but only on a case by case basis with a view to the competitive impact of each patent and validity issues associated with it.