27 February 2023

1 June 2023, The New European Patent enters into force

After the recent ratification of Germany, the Unified Patent Court (UPC) and the related European Unitary Patent, will be officially active starting from June 1^st 2023.

The European Unitary Patent will have a transitional period of seven years during which, pursuant to art. 83 (1) UPC, the jurisdiction of the Unitary Court and that of the national courts will apply, therefore legal actions may be brought under the rules currently in force as well as before the Unified Court.

At the end of the transitional period, the old system of national validations will be totally write off, and there will only be a unitary title with jurisdiction of the Unified Court exclusively.

The new system is very interesting, but it also opens up many uncertainties.

For what concern the jurisdiction, the Unified Court is a supranational organism, highly specialized, consisting of jurists and technical experts, which locations are mainly outside Italy. Very thorough and technical decisions are expected from it, but the complexity of the process makes it quite onerous.

The Unified Patent Court and the possibility to opt-out

For all the old European Patents, granted and valid, as for pending European applications and for new future application, it is possible, starting from March 1^st 2023 and for the entire transitional period, to exercise the right to opt-out.

The right to opt-out is regulated by art. 83(3) UPC and Rule 5, through which the jurisdiction of the Unified Court will be excluded entirely. Therefore, by exercising the right to opt-out, the old system is maintained and infringement or invalidity lawsuits relating to that patent will not be handled by the Unified Court.

On the other hand, if no preference is expressed, the patent application, or the patent already granted will be subjected to the Unified as well as to the local jurisdiction and therefore a possible dispute could be litigated both locally and in the Unified Court.