Intellectual Property firm, Marks & Clerk, has issued a call to action to patent owners in the UK and around the world. According to a roadmap issued on 6 October, the Unitary Patent (UP) package has a provisional start date of 1 April 2023, meaning patent owners must assess their rights and protections in line with the new package, and take action accordingly.
The Unitary Patent package has two components: the Unified Patents Court (UPC) and the Unitary Patent (UP). Once the UPC goes live, it will become possible to pursue suspected patent infringers centrally, to obtain judgements that are directly enforceable in the block of EU states that have signed up to the new system. The Unitary Patent will cover the same group of EU states and will be obtainable via a bolt-on to the European patent application process, which will otherwise remain unchanged.
Much has been said about the opportunities and risks associated with this new system but it is expected to offer a useful weapon in the armoury of the savvy patent strategist.
Speaking about what this means, Simon Mounteney, managing partner (Europe) at Marks & Clerk, said: “The new system will offer a significant reduction in costs for innovators who seek protection in more than a handful of EU states as they will no longer have to take parallel action in multiple countries. Likewise, where disputes and patent infringement are an issue, the claimant will only need to commence infringement proceedings in a single court in order to obtain a single pan-European injunction (preliminary or final) across several countries.”
Patents will be exposed to the jurisdiction of an established court operating under new rules, and the outcome of proceedings may be difficult to predict for some time. Patents falling under the jurisdiction of the UPC will also be vulnerable to central attack.
And this is not just an issue for those who plan to obtain UPs: the UPC will not only have jurisdiction over UPs, but also over European patents that have been granted under the existing system. Luckily, patent owners will have the option to opt their patents out of the UPC jurisdiction during a three-month “sunrise” period that is expected to start at the beginning of January.
Mounteney added: “The new system will fundamentally change the way patent owners can use existing and future patents in Europe. Although 1 April seems some way off, they need to start thinking about the effects – and the associated costs - sooner rather than later, and it is critical to start thinking about opting their patents out of the system straight away, if they haven’t started this already. Preparing for these changes could be time-consuming for owners of large portfolios, as the opt-out rules will require potentially extensive due diligence to be performed in order to ensure things are done correctly.“