Canada’s Intellectual Property Firm

Changes to the European patent system: What Canadian innovators need to know

Two significant changes to the European patent system are expected to come into force on June 1, 2023: the Unitary Patent system and the Unified Patent Court (UPC).  

Potential action required by European patent holders

Under the Unitary Patent system, it will be possible to obtain patent protection across multiple EU member states with a single patent. When a European patent application is approaching grant, it will be necessary to decide whether to validate the European patent nationally in countries of interest and/or as a Unitary Patent.

Clients of Smart & Biggar: We expect that the European associates that we are instructing to handle your European applications will provide advice at the appropriate time.  But if you would like further details now, please contact your relationship principal or counsel.

The UPC is a new patents court that will have jurisdiction for all Unitary Patents and any granted European patents that have not been explicitly opted-out of the jurisdiction of the UPC.

At present, European Patents can only be enforced or revoked by pursuing separate domestic court actions in the countries in which the European patent is in force. Once the UPC comes into force, a European Patent that has not been opted-out of the jurisdiction of the UPC may be enforced or revoked in all states which are participating in the UPC by way of a single centralized court proceeding. 

European patent estates should be reviewed now to determine whether action should be taken to opt-out of the jurisdiction of the UPC. This review should include your granted European patents, your Supplementary Protection Certificates (SPCs), and any European patents or SPCs for which you have a license.  

Opting-out of the jurisdiction of the UPC

Opting-out of the jurisdiction of the UPC eliminates the risk of another party bringing a central action at the UPC to revoke a European patent in all states which are participating in the UPC. It may also be preferable to opt-out to avoid the uncertainty that comes with actions at a new court system, particularly as it is unclear which precedents the UPC will follow.

However, if the risk of a third party bringing a revocation action against your European patent is low, or your European patent is only validated in states that are not participating in the UPC (most significantly the UK and Spain*) then opting-out may incur additional costs without significant benefit. In addition, being within the jurisdiction of the UPC may provide more options if you choose to enforce your patent: you can choose to enforce your European patent centrally at the UPC or separately in the national courts.

An opt-out can be withdrawn at any time, provided there are no pending national proceedings.

How to opt-out

It will be possible to file an opt-out starting from the three months before the UPC system comes into force (i.e., if nothing changes, from March 1, 2023). Provided no action has been brought in respect of a patent at the UPC, an opt-out can be filed until at least the end of the transition period for the UPC, which is expected to be 7+ years away.

There is no official fee for opting-out, but it is expected that European associates will charge a service fee. It will be possible to file opt-outs for multiple patents/applications in bulk, which may reduce costs.

Patentees who are seeking guidance on their portfolio or would like to opt-out any of their European patents from the UPC can contact a member of the Patents group at Smart & Biggar for further information.

The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

Reference

*As of January 13, 2023, the following states are not expected to participate in the UPC when it comes into force: Albania, Croatia, Cyprus, Czech Republic, Greece, Hungary, Iceland, Ireland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Poland, Romania, San Marino, Serbia, Slovakia, Spain, Switzerland, Turkey and the UK.