End of the Sunrise Period – Are you Ready?

The Sunrise Period ahead of commencement of the Unified Patent Court will end on 31th May 2023, following which the Unified Patent Court will have jurisdiction over all European patents in ratifying states that have not “opted out” of jurisdiction.

In addition, from 1 June 2023, it will be possible to convert your European patent application at grant to a European Unitary Patent for the 17 ratifying states.

Have you reviewed your European patent portfolio to see how these changes affect you?

Unified Patent Court

The Unified Patent Court is a new court set up to decide on infringement and validity of European patents in the ratifying states, whether “classic” European patent validated in national Patent Offices or the new European Unitary Patent.

A potential benefit of leaving your European patents within the jurisdiction of the Unified Patent Court is a single action is required to enforce your patent in all ratifying states.  However, this also means that a single action can invalidate your patent in all ratifying states.  Thus, it may be that the benefits of the unified Patent Court do not apply equally to all patents in your portfolio.

It is possible to opt your patent out of the Unitary Patent Court, but a specific request to opt-out must be filed with the Court.  If no action is taken the default position is “in”.

Whilst it is not essential to opt-out a patent before commencement, an opt-out cannot be recoded for a patent after an action has commenced in the Unified Patent Court.  We therefore recommend that opt-outs are filed as soon as possible.

If you have not yet reviewed your portfolio of European Patents, we would be happy to assist you with this.

Unitary Patent

Once a European Patent grants, there is a one-month period in which it is possible to convert the European patent to a European Unitary Patent for the ratifying states.  This period is significantly less than the three-month period provided for validating a European patent in the National Patent Offices.  Therefore, it is important to think about whether or not you want a Unitary Patent before grant.

There are some potential costs benefits to a Unitary Patent.  If you plan to validate the European patent in more than the four most popular European states, then the costs could be less and you would gain protection in all of the ratifying states.  However, a Unitary Patent can only be renewed as a single patent, therefore there is no option to drop states as the patent ages to save money.

Furthermore, the Unitary patent only covers the ratifying states, so if you want protection in any of the non-ratifying states, you will still need to validate the European patent in the national offices for those states.

Ratifying States

At commencement, the Unitary Patent Court Agreement will have been ratified by the following 17 countries:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

The non-ratifying states of the European Patent Convention are:

Albania, Croatia, Cyprus, the Czech Republic, Switzerland, the UK, Greece, Hungary, Ireland Iceland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Poland, Romania, Serbia, Slovenia, Spain, San Marino and Turkey.