It has been 40 years in coming but as early as 1 December this year the new Unitary Patent system will come into force. Essentially it will provide a single patent right across 25 European jurisdictions and will be enforced by a brand new Unified Patent Court that operates separately from national courts. It is slated to be a much more cost effective and efficient system at both application and enforcement stage and will therefore be a hugely useful IP right for SME’s. Not surprisingly, Ireland has indicated that, subject to a constitutional referendum approving entry, it will participate in the new system and will host a chapter of the new court.
Some people may think that the anticipated referendum will delay Irish participation and therefore nothing needs to be done right now, but for European patent owners there are immediate and significant consequences, whether Ireland eventually accedes to the system or not. The new Court will have non-exclusive jurisdiction over all pending European patent applications and granted European patents unless patent owners expressly make an application to “opt out” of the new system. This means that existing European patent owners need to decide whether they wish to opt out or not before the new system begins, which at the earliest will be 1 December 2017 but could be delayed to 1 January 2018 or very early in the New Year.
While the decision whether to opt out of the new system or not will depend upon a range of factors, (including, in particular, the strength of the patent, the jurisdictions in which it has been validated or in which separate national patent protection exists and the nature of the relevant industry sector) at the simplest level the consequences of not opting out could be that the patent ends up being revoked in all the countries in which it has been validated as a result of one set of proceedings in the new court. There are also consequences of opting-out to be considered, namely that the patent owner gives up the opportunity for a supra-national injunction and that the mere fact of opting out affords competitors an insight into the patent owner’s view of its portfolio and patent enforcement strategy.
The necessary assessment is a complex one and must be focussed on the European patent owner’s individual circumstances and portfolio. It is however an exercise that executive management and boards should be considering and soon as there is relatively little time to finalise an overall strategy before the “opt-out” sunrise period begins on 1 September 2017.