It is now highly likely that the Unified Patent Court will go ahead. Twelve countries have already ratified the Agreement and the UK and Germany are expected to have ratified by the end of April. This will provide the number of ratifications necessary for the court to proceed. It is expected that other countries will join soon afterwards.
The Unified Patent Court is a central court for the litigation of patents granted via the European Patent Office. Assuming ratification proceeds, the court should be open for business by the end of 2017. Once the court is in place, it will also be possible to obtain a unitary patent from a European patent application. This will be a single patent covering all the states who have ratified the Unified Patent Court system, rather than the bundle of national patents it is currently possible to obtain. National patents will still be available but there will be the option of obtaining a unitary patent. Unitary patents will only be able to litigated in the Unified Patent Court.
Because the Unified Patent Court is new, a transitional period of seven years has been provided, preceded by a sunrise period. During these periods, patentees can choose to opt out of the Unified Patent Court system for current European patents and applications. The sunrise period for opting out will start in September if the court system is ratified by the end of April.
What is the effect of opting out?
If a patentee chooses to opt out of the court, any litigation under the patent in question will take place, as at present, in the national courts, unless the patentee chooses to opt back into the court. The opt out has to be taken on each patent individually.
Whether a patentee chooses to opt out or not, if litigation or revocation proceedings are commenced in either the national courts or the Unified Patent Court, it will not be possible to change courts after commencement. Opting out potentially puts more barriers in the route of a potential infringer, who could be faced with proceedings in multiple jurisdictions using the national courts, and this may be in the best interests of a patentee.
Our view is that for the vast majority of cases it would be advisable to opt out of the Unified Patent Court system initially and see how it develops. If an infringement issue does arise then you will need to consider at that point whether to stay opted out and use national courts or to opt back in to take action. This is likely to depend on a number of factors including the location of any infringement.
We will be writing again once we have confirmation that the Unified Patent Court system is proceeding and a start date for the sunrise period for opting out has been set. If you would like to discuss whether opting out is the right strategy for your patents, please contact your usual R&G representative.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.