Unified Patent Court's opt-out provisions

Last updated

Proprietors of and applicants for European patents [notes 1] have the possibility to opt out their European patents or patent applications from the exclusive competence of the Unified Patent Court (UPC). [1] An opt-out most notably prevents a competitor from challenging the validity of the European patent centrally before the UPC (by filing an action for revocation before the UPC), thus allowing the proprietor to avoid putting all his eggs (i.e., all national parts of the European patent) in one basket. [2]

Contents

The possibility to opt out is open until one month before the end of a seven-year transitional period [notes 2] after the entry into force of the UPC Agreement (UPCA) on June 1, 2023 [2] but is no longer available if an action has already been brought before the UPC. [1] [4] [notes 3] The possibility to opt out is not available for European patents with unitary effect, which are also called "unitary patents". [2] [5] [notes 4] An opt-out can be withdrawn at any time "unless an action has already been brought before a national court". [7]

Since the UPCA's "sunrise period" started on March 1, 2023, Applications to opt out can be filed with the Registry of the UPC using the UPC's case management system (CMS). [2] Applications to opt out cannot be filed with the European Patent Office (EPO), even though information about opt-outs is expected to also be available from the European Patent Register. [2] Only published patent applications can be opted out, [2] [8] and a European patent can only be opted out "in respect of all EPC contracting states for which the patent was granted". [2] No fee is payable to the Court for lodging an Application to opt out. [2]

See also

Notes

  1. ↑ This possibility is also available to holders of supplementary protection certificates (SPCs) issued for a product protected by a European patent. [1]
  2. ↑ The transitional period may be extended by up to seven years. [2] [3]
  3. ↑ This applies no matter whether the action is admissible or not. [2]
  4. ↑ If a European patent application is opted out and if unitary effect is subsequently registered for the European patent granted on the basis of the opted-out application, the opt-out will cease to have effect. That is, the opt-out is deemed to be withdrawn. [2] [6]

Related Research Articles

<span class="mw-page-title-main">Unitary patent</span> Potential EU patent law

The European patent with unitary effect, also known as the unitary patent, is a European patent which benefits from unitary effect in the 17 participating member states of the European Union. Unitary effect may be requested by the proprietor within one month of grant of a European patent, replacing validation of the European patent in the individual countries concerned. Infringement and revocation proceedings are conducted before the Unified Patent Court (UPC), which decisions have a uniform effect for the unitary patent in the participating member states as a whole rather than in each country individually. The unitary patent may be only limited, transferred or revoked, or lapse, in respect of all the participating Member States. Licensing is however possible for part of the unitary territory. The unitary patent may coexist with nationally enforceable patents in the non-participating states. The unitary patent's stated aims are to make access to the patent system "easier, less costly and legally secure within the European Union" and "the creation of uniform patent protection throughout the Union".

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

<span class="mw-page-title-main">European Patent Office</span> One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

European patent law covers a range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations. For some states in Eastern Europe, the Eurasian Patent Convention applies.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

European patents are granted by the European Patent Office (EPO) under the legal provisions of the European Patent Convention (EPC). However, European patents are enforced at a national level, i.e. on a per-country basis, or, since June 1, 2023, before the Unified Patent Court (UPC). Under Article 64(3) EPC, "any infringement of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the Contracting States to the EPC. A few, limited aspects relating to the infringement of European patents are however prescribed in the EPC.

European patent law is characterized by the coexistence of

  1. national patent systems, and thus national patent offices and national courts;
  2. a European patent system associated with the European Patent Convention (EPC), in the context of which the European Patent Office (EPO) grants European patents through a central examination procedure;
  3. a Eurasian patent system associated with the Eurasian Patent Convention (EAPC), in the context of which the Eurasian Patent Office (EAPO) grants Eurasian patents through a central examination procedure; and
  4. a Unified Patent Court (UPC) competent for the member states of the Unified Patent Court Agreement (UPCA).

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

<span class="mw-page-title-main">Unified Patent Court</span> Patent court in the European Union

The Unified Patent Court (UPC) is a common patent court of 17 countries of the European Union, which opened on 1 June 2023.

German patent law is mainly governed by the Patents Act and the European Patent Convention (EPC).

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

Patent law in the Netherlands, or simply Dutch patent law, is mainly governed by the Kingdom Patents Act and the European Patent Convention. A patent covering the Netherlands can be obtained through three different routes: through the direct filing of a national patent application with the Netherlands Patent Office, through the filing of a European patent application, or through the filing of an international application under the Patent Cooperation Treaty followed by the entry into European phase of said international application. The Dutch patent has a term of 20 years and has effect in the Netherlands, Curaçao and Sint Maarten. Aruba has its own patent system.

References

  1. 1 2 3 Article 83(3) of the Agreement on a Unified Patent Court (UPCA).
  2. 1 2 3 4 5 6 7 8 9 10 11 Luginbuehl, Stefan; Kotzur, Juliane (9 March 2023). "The Unified Patent Court's Opt-Out Option – A General Introduction". GRUR International. 72 (3): 250–256. doi:10.1093/grurint/ikac139.
  3. ↑ Article 83(5) UPCA.
  4. ↑ "Frequently Asked Questions: Opt-out | Unified Patent Court". www.unified-patent-court.org. Retrieved 2 April 2023.
  5. ↑ "FAQ". www.epo.org. European Patent Office. Retrieved 2 April 2023. It is important to note that the possibility of opting out or bringing an action before a national court during the transitional period is not available for Unitary Patents.
  6. ↑ Rule 5(9) of Rules of Procedure of the Unified Patent Court (RoP).
  7. ↑ Article 83(4) UPCA.
  8. ↑ Rule 5(1) RoP.

Further reading


Europe green light.svg

This article relating to the law of Europe or of a European country is a stub. You can help Wikipedia by expanding it.

This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.