Launch of Unified Patent Court puts EU patent owners under time pressure

On 1 June 2023, the Unified Patent Court (UPC) will begin its work. The decisions of the new court concerning the infringement and validity of European patents will apply across national borders in all UPC contracting states. In addition to Germany, for now these are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Slovenia.  

For owners of European patents (EPs), the so-called "sunrise period" has thus started on 1 March 2023 and will run until 31 May 2023. Until then, it is possible to exclude EPs from the exclusive jurisdiction of the UPC ("opt-out"). If an opt-out is declared, the national courts remain competent, i.e. in Germany the patent litigation chambers of the district courts for infringement proceedings and the Federal Patent Court (BPatG) for nullity actions. Otherwise, the UPC will have exclusive jurisdiction. 

While the unitary enforcement of an EP against an infringer in all contracting states at once is an appealing upside to the UPC, the risk of unitary revocation of an EP in all contracting states goes hand in hand. 

It is therefore time-critical for owners of EPs to evaluate their portfolios of EPs (in particular as to risk of revocation) decide whether to declare an opt-out for some or all of their EPs. It should be noted that an opt-out becomes impossible even before the expiry of the sunrise period if the EP in question has already become the subject of proceedings before the UPC by then.