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Unitary Patent System – Are You Ready?

As we have been hearing for some time now, the Unitary Patent (UP) system is going to be upon us before we know it. As you may recall, this new system includes not only the creation of a Unitary Patent asset, but also the establishment of a Unified Patent Court. As of the writing of this article, it appears that the UP system is imminent with the final milestones for triggering the system happening by this late Spring / Summer. No longer can we hope that the new UP system will only be implemented after we retire. It’s now a reality with us having to get our arms around it by the end of this year.

As you may recall, for the UP system to become effective, at least 13 of the 25 EU countries including Germany, France and the UK must ratify the UPC Agreement. At this point, we’re only waiting on the UK (expected any time now) and Germany (June – Aug timeframe) to ratify before we enter a “provisional protocol” period. At that milestone, the Unified Patent Court will begin to coordinate and opting-out from the new UP system will be possible.

So what does that mean for all of us? After the opt-out period begins, the final deadline for making an election for traditional European patent assets will likely be in early December, 2017. Be forewarned that the opt-outs will be done electronically through the system’s new case management tool with the registrar not checking whether an opt-out meets all of the requirements. Therefore, it will be the responsibility of the patent practitioner to ensure that the opt-out is done correctly. Definitely something to keep a close eye on.

For pending patent applications that are close to being granted, companies also need to begin deciding whether they want to allow such assets to be included within the new UP system by ensuring that grants are appropriately timed and the necessary request for unitary effect are made.

It also is important to ensure that one monitors which countries are covered by the new system. At the start of the new system, at least 14 countries will have ratified the UPC Agreement resulting in those countries being included within the Unitary Patent scope of coverage. However, those countries that have not ratified the UPC Agreement prior to obtaining a Unitary Patent may not be retroactively included within this scope. An approach to address this UP system limitation is to consider either filing national applications in those countries and/or utilizing divisional patent applications to preserve your European patent rights during this transitional period.

Obviously, the above is just a quick thumbnail sketch of some of the things that you should keep an eye on as we progress through the summer and head toward the UP opt-out deadline and the implementation of a new Unified Patent Court, at the end of this year. Good luck to everyone during this truly historic period for European patent rights.

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