The Preparatory Committee for the Unified Patent Court plans to complete its activities by the summer of 2016. From then on, a sunrise period for opt-outs of traditional European patents will start. In January 2017, the Unified Patent Court will open its doors and the first Unitary Patents may be granted.
Previous editions of Eubelius Spotlights commented on the preparations for a new European patent system involving the creation of a European patent with unitary effect ("Unitary Patent") and a European patent court ("Unified Patent Court") (see Eubelius Spotlights December 2014). The Unitary Patent is intended to offer a cheaper patent with effect in 26 EU Member States. The Unified Patent Court is designed to avoid scenarios in which patentees are forced to initiate separate legal proceedings against infringers in each EU Member State (as is currently the case), given that such proceedings in each Member State are very costly and often result in conflicting judgments.
In May 2015, the Court of Justice of the European Union finally dismissed Spain's remaining legal objections to the European regulations regarding the Unitary Patent (see Eubelius Spotlights June 2015). Since then, the European patent package has been gaining momentum.
In the meantime, Italy has joined the new system, which means that the future Unitary Patents will have effect in 26 EU Member States. In addition, the participating Member States have reached a political agreement regarding the renewal fees for the Unitary Patent. In the future, patent holders will have to pay EUR 35,555 in renewal fees over the course of 20 years for a patent with effect in 26 Member States. The cost of patent protection in 25 Member States currently amounts to EUR 158,621. During the first 10 years, the cumulated renewal fees for a Unitary Patent will be less than EUR 5,000, which is good news for SMEs and educational institutions.
In October 2015, the Preparatory Committee for the Unified Patent Court decided that it will complete its work by mid-2016. This should ensure that the Unified Patent Court becomes operational in January 2017. At the same meeting, the committee adopted the Rules of Procedure for the Unified Patent Court. Drawing up these rules has taken more than four years. Attorneys and patent attorneys can now familiarise themselves with these new procedural rules.
The Unified Patent Court will not only have jurisdiction for Unitary Patents, but also for traditional European patents. The patentee will have the option to choose between a traditional European patent and a Unitary Patent. However, for European patents, there is a possibility to opt out of the jurisdiction of the Unified Patent Court. It is expected that, at an early stage, many patentees will choose to opt out. In order to prevent a patentee from being faced with a revocation action against its European Patent during the initial working days of the Court, without having had the opportunity to opt out of the jurisdiction of the Unified Patent Court, it will be possible to already opt out for existing European patents prior to the starting date for the Unified Patent Court. Such an opt-out will be possible electronically as of mid-2016 via the website of the Unified Patent Court. Already today, a test version of the opt-out software is available on http://secure.unified-patent-court.org.
It is very important for a patentee to decide, prior to the starting date for the Unified Patent Court, which European patents it wishes to exclude from the jurisdiction of this Court. If you have not yet analysed your patent portfolio in this regard, we advise you to address this issue as soon as possible and at the latest by mid-2016. Once the sunrise period starts, you will be able to opt out electronically. An opt-out needs to be done by each (co-)owner of a patent. Licensees cannot opt out. An opt-out will be subject to a one-time fee of EUR 80, payable by credit card.