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Developments Shaping European Ip Law After a Multiyear Saga, UPC Nears Fruition

The winding path toward a European UPC took another turn in 2021. While the ambitions for the project seemed to peter out in the first half of 2021, preparations took up a surprising speed after clearing one of the biggest hurdles: the German Federal Constitutional Court’s decision to dismiss preliminary injunctions directed against the German Approval Act. Only a few months after Germany’s green light, Austria became the last of the 13 EU Member States required to join the protocol on a UPC on provisional application (PPA). The UPC Preparatory Committee (Committee) is now formally in charge to take further steps towards a functioning UPC, which is expected to open its doors as soon as the second half of 2022.

Practice Note: Entities doing business in the European Union should carefully review their patent portfolio to decide whether there is an interest in opting-out from the UPC regime for all or part of their existing European patents and whether they wish to file European patents with unitary effect rather than standard European patents moving forward, depending, inter alia, on the strength of their invention(s) and their materiality for their business.

As stated in a note published by the Presidency of the Council of the European Union on 24 September 2021, the preparatory stage includes the adoption of the secondary legislation of the UPC, including procedures, establishment of a budget, recruitment of judges and administrative staff, election of a president, final configuration and testing of the file management system and ensuring that all information technology (IT) infrastructure is properly set up and secured. Additionally, a working agreement with the European Patent Office (EPO) concerning patent application and patent validation remains to be completed. Many observers regard the envisaged timeline of 10 months to complete these preparations as challenging, noting that several of the above points will likely require significant discussion.

The exact start date of the UPC and Unitary Patent System depends on the duration of the initial provisional application stage and on Germany formally depositing its UPC Agreement ratification (which has been withheld so far to give time for the Committee’s work). Once the UPC member states agree that the initial provisional application stage is almost completed (which is expected during the next two to six months), Germany will deposit its UPC Agreement ratification. This will then trigger another four-month run-up until the UPC finally opens its doors, which could be as early as the second half of 2022. After that, European patents with unitary effect will be available at the EPO, and a transitional period of seven to 14 years will initiate, during which European patent holders can still opt-out of the UPC regime.

In contrast to the currently available European patents, European patents with unitary effect—if the patentee opts for the unitary effect—will not be a mere bundle of national patent rights but confer the same rights to a patentee in all participating EU Member States. Likewise, in case of invalidation, a European patent with unitary effect will be revoked in all countries at once.

Dominik Rissmann also contributed to this article.

© 2023 McDermott Will & EmeryNational Law Review, Volume XII, Number 61

About this Author

Henrik Holzapfel, patent attorney, Dusseldorf, Germany, McDermott Law Firm

Dr. Henrik Holzapfel advises on all aspects of intellectual property law. He focuses on litigating patents, including the enforcement of patents essential to industry standards and FRAND defenses. Henrik also has extensive experience in litigating trade secret matters. Other areas of his practice include advising on IP licensing agreements, including advice on European competition law, drafting R&D agreements and advising on employees’ inventions. Henrik’s clients represent a wide variety of industries such as IT, pharmaceutical, biotech, medical devices, chemicals,...

+49 211 30211 230
Laura Morelli, McDermott Will, Paris, Intellectual property Lawyer, Perfume Trademarks Attorney

Laura Morelli leads the Paris Intellectual Property Practice. She advises French and foreign companies in a wide variety of sectors, including the chemical, energy, fashion, food processing, media, perfume, pharmaceutical and technology industries.

Laura assists her clients, as advisor and as litigation counsel, in all stages of protection, exploitation and defense of their intellectual property rights, including trademarks, patents, know-how, authors' rights, designs and models. She also has significant experience in matters of unfair...

Claire Boosz Associate Paris McDermott Will & Emery

Claire Boosz focuses her practice on intellectual property (IP) matters. She both provides legal counsel and represents clients in contentious matters before the courts.

Prior to joining McDermott, Claire completed several internships in French law firms, a well-known British-American law firm in Luxembourg and most recently a British law firm in Paris. She worked on various IP law topics including trademark, copyright and design for sectors such as media, cosmetics, luxury goods and food.

+33 1 816-90875
Charles de Raignac Intellectual Property Lawyer McDermott Will & Emery Law Firm

Charles de Raignac advises French and foreign companies on all aspects of intellectual property law (patents, know-how, trademarks, authors’ right, designs and models).

Charles has experience in enforcing, litigating and licensing intellectual property rights in various sectors, including the life-sciences, media and fashion industries. Charles also assists clients in managing their trademark/design portfolio and developing coherent and inventive filing strategies.

+33 1 81 69 14 65
Maximilian Kiemle Attorney IP Litigation McDermott Will Emery Dusseldorf

Maximilian Kiemle focuses his practice on IP litigation. Prior to joining McDermott as an associate, Maximilian worked at a range of international law firms where he gained exposure to a variety of areas which include patent, trademark, unfair competition, and advertising law.  Maximilian has particular automotive industry experience, including related sales and antitrust law, and contract drafting experience for automobile manufacturers.

He holds an LLM in IP and ICT Law from the Katholieke Universiteit Leuven, Belgium. Before studying in...