Dr. Antje BrambrinkThe implementation roadmap for the Unified Patent Court (UPC) was released in October 2022 by the UPC Preparatory team. The roadmap displays the key activities and milestones for the UPC in the lead up to its scheduled launch on June 1, 2023.

One of those major milestones was achieved when Germany deposited its instrument of ratification of the Agreement on the Unified Patent Court on February 17, 2023. The deposit kicked-off the sunrise period on March 1, 2023. Since then, opt-outs can be filed to exempt European bundle patents out of the jurisdiction of the UPC. The deposit clarified that the court would open for business on June 1, 2023. From this date onwards cases can be filed at this new venue.

The UPC seems keen to be fully prepared by then. Final preparations that have just recently been performed include the announcement of the Presidium’s decision on the presiding judges of the various divisions as well as the issuance of templates for the judges’ decisions and orders and Non-binding Guidance for their use. The latter is also intended to provide the parties’ representatives with some guidance of what needs to be included in the submissions. We expect the court to release further templates for the parties’ submissions at a later stage.

Another essential part is the establishment of the Case Management System (CMS), where both opt-outs and litigation cases are to be filed. According to a note from the UPC’s Registrar at the end of March 2023, within the first 23 days of the sunrise period:

  • About 1,500 persons had applied for registration as representatives before the UPC; and
  • Around 1,800 opt-out applications had been filed.

Meanwhile the number of opt-outs filed has significantly increased (around 155.000 on May 15, 2023). This is not unexpected, as many industry players – in particular in the pharmaceutical sector – seem to prefer a wait and see approach rather than making use of the new system right from the start.

In view of the relation of opt-outs being filed so far and the number of patents accessible for opt-outs, it can be expected that there will be a high number of last-minute opt-out filings before the court open its doors, which will be a stress-test for the CMS.

For those keen to opt-out a fully functional system is key. However, users had to face technical challenges, including unavailability of the filing system right from the start when the system was made publicly available. The issues on the CMS’s functionalities were even noted by the court’s Registrar on the UPC’s website and were reiterated by the UPC on May 12, 2023. We hope that these issues will be solved soon.

This is important also for litigants, who want to file their cases from June 1, 2023, onwards. There are certainly parties who cannot wait to make use of this new venue, as the UPC provides certain benefits such as the grant of one injunction decision covering multiple jurisdictions, speedy proceedings, or the possibility for defendants to attack a patent that is not-opted out with a central revocation attack.

I expect that a flurry of cases will be filed on day one when the court opens. What happens after that will depend upon whether or not the new system provides enough incentives for bringing patent litigation and attracting cases to be transferred from other forums, particularly Germany, which is one of European’s busiest jurisdictions so far.

Certainly, the UPC procedures do much to make it an attractive forum for enforcing patents and the recent publication of the European Commission’s “proposals for regulations on supplementary protection certificates” is noteworthy in this context. The Commission sees “a clear need to complement the unitary patent (‘European patent with unitary effect’) by a unitary SPC”, which could provide an incentive also for the pharmaceutical industry to step into this new system, further strengthening the UPC project.

Written by Dr. Antje Brambrink, Counsel at the Munich office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP




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