Unified Patent Court milestone reached as preparatory work begins

The Protocol to the Agreement on a Unified Patent Court on provisional application (PAP-Protocol) was formally ratified by Austria, which deposited its instrument of ratification on Tuesday, meaning the number of ratifications from participating UPC system members had reached the required threshold – 13 – to enable the PAP-Protocol to enter into force on Wednesday.

The PAP-Protocol is, along with the Protocol on Privileges and Immunities of the UPC and the UPC Agreement (UPCA), one of three treaties that underpin the new UPC system. It provides for the final preparatory steps for the UPC to take place, such as the appointment of judges, testing of the IT systems, and setting of the budget.

The UPC preparatory committee said: “This event marks the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organisation. During the PAP, the last part of the preparatory work in establishing the Court will be conducted. The practical work will start with the inaugural meetings of the governing bodies of the Court, namely the Administrative Committee, the Advisory Committee and the Budget Committee. Thereafter the crucial work of finalising the recruitment of the judges of the Court will be carried out. It is deemed that the PAP will last at least eight months.”

“When the state parties are confident that the Court is functional, Germany will deposit its instrument of ratification of the UPC Agreement, which will trigger the countdown until this Agreement’s entry into force and set the date for the start of the UPC’s operations,” it said.

The UPC system will have legal effect on the first day of the fourth month after Germany’s ratification.

The UPC is being set up to provide a dedicated judicial system for litigating new unitary patents. Existing European patents that are not specifically opted-out of the UPC’s jurisdiction will also be subject to the new court system.

Amsterdam-based European patent litigator András Kupecz of Pinsent Masons said: “Each business has to decide for itself whether the benefits of subjecting a patent to the jurisdiction of the UPC overrides the potential risks. We know many patent holders have already considered this issue and are already developing patent strategies that factor in the UPC, and that some are keen to wait to see how initial UPC case law develops before they engage with the new court system. For other businesses that have not given much thought to the UPC project to-date, this development should be the spur to consider whether they wish to opt any of their European patents out of the UPC’s jurisdiction in readiness for the court becoming operational.”

Emmanuel Gougé of Pinsent Masons in Paris said: “The ability to obtain unitary patent protection across Europe will be attractive to some businesses, but others may be wary about the potential for one ruling by a court in the UPC system to knock out their patent rights across multiple jurisdictions.”

Only EU member states can participate in the UPC system. While most of those states support the project, three – Spain, Croatia and Poland – have so far indicated that they will not participate in it. States that support the project will have to ratify the UPC Agreement in national law before they can participate in the new court system.

Dublin-based patent litigator Ann Henry of Pinsent Masons previously told Out-Law that a public referendum needs to be held in Ireland on ratification of the UPC Agreement under the Irish Constitution. She said this is expected to happen in the coming months.