The German parliament recently passed the Approval Act (the Act) regarding the planned European Unified Patent Court (UPC) and the protocol on a UPC on provisional application (PPA). The Act was passed after Germany’s Federal Constitutional Court rejected applications for a preliminary injunction directed against the Act. The instrument of Germany’s ratification of the PPA (not of the UPC Agreement (UPCA)) has been deposited with the European Council. The UPC Preparatory Committee published a report calling Germany’s ratification “a decisive step on the establishment of the Unified Patent Court after the work has been on hold for several years during the examination of the Agreement by the German Federal Constitutional Court.”
The PPA will only come into effect after at least 13 EU Member States (which must include Germany, Italy and France, i.e., the three Member States in which the most European Patents were in effect in 2012) ratify the PPA and deposit their respective instrument with the European Council. The PPA must also ratify the UPCA (or at least have parliament’s approval to do so) and deposit this second instrument with the European Council. In this complex scheme, the German ratification was previously the main legal hurdle.
Now, after publication of Slovenia’s Approval Act in its National Law Gazette and the expected deposit of its PPA and UPCA instruments, only one more national ratification and instrument deposit is needed to reach the required 13 ratifications. According to a note published by the Presidency of the Council of the European Union on September 24, 2021, Austria is likely to move next, whereupon the project will reach the minimum number of ratifying Member States. The Austrian Government submitted a draft for an approval act to its parliament in July 2021 and expects approval.
Upon the complete ratification of the UPCA and PPA, the UPC will form on a provisional basis and commence its existence as a legal entity. The UPC Preparatory Committee (Committee) can then formally start its work. Although there is no timeline set for the initial provisional application stage, the Committee expects that stage to continue for approximately six to 10 months following ratification. As stated in the note by the Presidency of the Council, this stage includes the adoption of the secondary legislation of the UPC, including procedures, establishment of a budget, recruitment of judges and administrative stuff, election of a president, the final configuration and testing of the file management system and ensuring that all IT infrastructure is properly set up and secured. In addition, a working agreement with the European Patent Office (EPO) on patent application and patent validation remains to be completed. Many observers regard the timeline to complete preparations as challenging, noting that several of the above points will likely require significant discussion. With these issues in mind, the Competitive Council (Council) met on September 29, 2021, to discuss further actions regarding the preparations and to invite ministers to inform the Council of recent or upcoming developments in their respective Member States. The EPO Select Committee is set to meet again on October 14, 2021, to discuss the next steps in preparing for the introduction of the European Unified Patent as an additional title with uniform effect in participating Member States, which in turn depends on the existence of the UPC. However, a more detailed statement of the timeline and planned further steps remains pending.
If the remaining ratifications are deposited and the preparations completed, the UPC could be in force as early as the second half of 2022, as noted in the statement of the Presidency of the Council. The exact start date of the UPC and Unitary Patent System largely depends on the duration of the initial provisional application stage, and in that regard, Germany finally depositing its instrument on the UPCA. If there is substantial progress during the next two to six months, Germany could deposit its instrument, which will then trigger another four-month run-up until the UPC may officially take its first cases. The UPC will finally open its doors on the first date following four months of the last instrument deposit, and at that point, Unitary Patents could be available at EPO.
Practice Note: Entities doing business in the European Union should check whether their intellectual property strategy is fit for the UPC entering into force and European Unified Patents becoming available.
Dominik Rissmann, a trainee in our Düsseldorf office, also contributed to this case note.