The entry into force of the Agreement on a Unified Patent Court (AUPC) is now within reach

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The entry into force of the Agreement on a Unified Patent Court (AUPC) is now within reach.

The entry into force of the Agreement on a Unified Patent Court (AUPC) is now within reach. Only Germany and the United Kingdom have yet to ratify the Agreement. The entry into force of the AUPC would create both a Unified Patent Court and a Unitary Patent.


 

 

AUPC 2018 entry into force 1. Entry into force

The entry into force of the Agreement on a Unified Patent Court (AUPC) is now within reach. Only Germany and the United Kingdom have yet to ratify the Agreement. The entry into force of the AUPC would create both a Unified Patent Court and a Unitary Patent. At the moment, the European Patent, which has already been established for years, is still the fastest way to obtain patent protection for all member states of the European Union. Following a unified filing procedure before the European Patent Office (EPO), the patent is validated for the individual member states after its grant, resulting in a bundle of national patents according to the applicant's wishes. After the patent has been granted, any infringement and cancellation actions for each national patent are then brought separately before the respective national courts.

In the case of the future Unitary Patent, the application procedure is essentially identical to the application procedure for European Patents before the EPO. However, once the patent has been granted, the Unitary Patent automatically takes effect for all states of the European Union having ratified, similar to the existing EU trademarks and designs. What is special is that infringement and cancellation proceedings can now also be brought centrally before a new Unified Patent Court, whose decisions also have an effect for all states of the European Union having ratified.

The entry into force of the AUPC will not abolish the European Patent in its current form. However, the Unified Patent Court will also be empowered to decide on the national patents created from the European Patents in the states having ratified.

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2. Transition period

After the AUPC comes into force, a transition period of seven years is planned for this purpose. During this phase, plaintiffs have the choice of whether to commence litigation on European Patents before the competent national courts or before the Unified Patent Court.

This may initially create a degree of uncertainty for patent holders, since they cannot predict in which court they will have to defend their patent against possible cancellation proceedings. This circumstance is intensified by the fact that, by its very nature, there are no empirical data for the Unified Patent Court as to how the individual national, regional and central bodies will decide in the event of a dispute.

Therefore, in Article 83 (3) AUPC at this stage, the AUPC grants the patent proprietors of Euro-pean Patents the right to withdraw from the Unified Patent Court its competence by declaration (so-called "opt-out" declaration) in so far as no litigation concerning this patent is pending before the Unified Patent Court. Such a declaration in accordance with Article 83 (3) AUPC will only become effective upon its entry in the European Patent Register. At present, it is not yet completely clear in what time frame the European Patent Office will carry out the corresponding entry in the register.

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3. Proceedings before the UPC

In addition, proceedings before the Unified Patent Court can be started immediately after the AUPC comes into force. For this reason, a so-called "Sunrise Period" between the final ratification of the AUPC and its entry into force is also envisaged, in which, among others, patent holders among others should have the possibility of submitting declarations in accordance with Article 83 (3) AUPC before proceedings can begin before the Unified Patent Court. According to the AUPC preparatory committee, this Sunrise Period should ideally last six to eight months.

However, whether and when this Sunrise Period will actually take place depends on the entry into force of the "Protocol to the Agreement on a Unified Patent Court on Provisional Application " (PPA).

At present, the PPA is not yet ratified by the required number of EU member states, especially the Federal Republic of Germany. The current hope is that the PPA and the AUPC will be ratified within such a timeframe in order to grant patent holders a sufficiently long "Sunrise Period" to make declarations in accordance with Article 83 (3) AUPC. Nevertheless, holders of European Patents who wish to make such a declaration should start preparations in good time in order to make the declaration as soon as possible.

It is currently foreseen that the declaration pursuant to Article 83 (3) AUPC may be revoked once at a later date as long as no proceedings are pending before one of the national courts for the respective patent family. The revocation will have a terminal effect, i.e. after a revocation, the Unified Patent Court will inevitably have jurisdiction for litigations over the European Patent having then Unitary Effect.

Despite the imminent withdrawal of the United Kingdom from the European Union, the United Kingdom Government has announced its intention to ratify the Agreement. In order to do this, the Privy Council of the United Kingdom will have to issue a corresponding order, which has now been carried out. Subsequently, the official ratification of the Agreement by the United Kingdom should follow shortly.

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4. Ratification of Germany 

A pending constitutional complaint is currently still standing in the way of ratification of the Agreement by the Federal Republic of Germany. It is currently expected that the Federal Constitutional Court will decide in the first half of 2018 whether the complaint is formally admissible or not:
If the complaint were rejected as inadmissible, the Federal Republic of Germany could and would probably ratify the Agreement in 2018. The Agreement would then probably enter into force at the end of 2018 or early 2019.

However, if the constitutional complaint is determined to be admissible, the Federal Constitutional Court would still have to carry out a substantive investigation. A substantive decision cannot be expected before 2019, which would probably delay the entry into force of the Agreement until at least the second half of 2019.

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Authors: Oliver Hassa and Tobias Rossteuscher, March 2018