November 2, 2022Client Alert

Updates on the European Union’s Unified Patent Court – Sunrise Period to Start in 2023

After months of planning, the start date for the Unified Patent Court (“UPC”) in Europe has been set for April 1, 2023[1]. With this date established, patent owners and applicants may begin to opt out of the UPC in advance starting January 1, 2023.  The three months leading up to the April 1st start date is referred to as the “sunrise period” for the UPC. As explained in more detail below, the decision to opt out for existing European patents and soon-to-grant European applications, especially during the sunrise period, should take into consideration the goals you have for your European patent portfolio and how you plan to achieve those goals.

The UPC is a single patent court system for enforcement and invalidation proceedings involving a Unitary Patent, and the UPC will be the default court for traditional patents (in countries that ratify the UPC Agreement) unless a patent holder has chosen to opt out of the UPC. As such, decisions about whether to opt out from jurisdiction of the UPC for all or part of your European patent portfolio, especially during the sunrise period, should take into consideration different factors. These factors include:

  • the nascent nature of the UPC and the related lack of predictability regarding UPC rules and procedures for infringement, invalidity, and related defenses
  • the ability to obtain an injunction or infringement determination in one court against an infringer in multiple European countries
  • whether competitors are likely to seek invalidation of any part of the portfolio
  • commercial value of each patent in the portfolio
  • strength of each patent in the portfolio
  • costs to opt out - there is not a government fee, but European counsel fees will apply
  • the ability to opt out initially with a one-time option to opt in at a later date

As a reminder, a Unitary Patent provides patent protection in countries that are signatories to the Agreement on grant of a patent by submitting a request to the EPO. This contrasts with the current or traditional system in which an applicant, on grant, must choose individual jurisdictions where the traditional patent is validated. The Unitary Patent is intended to streamline obtaining patent protection in multiple European jurisdictions. The traditional system will remain an option in parallel with the Unitary Patent option. Every existing traditional patent and any traditional patents that grant after the Agreement takes effect will be subject to the UPC’s jurisdiction by default unless the patent holder takes affirmative action to opt-out of the new system during the transitional period. An opt-out affects all states that are subject to the UPC – there are no partial opt-outs.

Whether to opt out of the UPC is not a one-size-fits-all decision. While opting out can be done in bulk for the entirety of your European portfolio, strategic decisions about each patent or patent family in your portfolio will help you balance how the UPC may impact the goals you have for your European patent portfolio and the costs to request the opt-out(s).

Opt-outs from the UPC may be available after April 1, 2023, if a third party has not filed a suit in the UPC, but it is important to weigh the factors outlined above now in view of your European patent goals and strategies to assess how opting out, or deciding not to opt out, may impact your portfolio. We can assist you in weighing these decisions.


[1] The start date will be finalized based on German ratification of the UPC Agreement, which is planned for late December 2022.

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