A single patent court covering up to 24 countries
The new Unified Patent Court opened its doors on 1 June 2023, bringing with it big changes and new opportunities for both patent owners and their challengers. The new court is being introduced alongside the new European ‘Unitary Patent’, which will provide a single patent effective across up to 24 states. This is an EU initiative and so the 24 states are all members of the European Union (Spain, Poland and the Czech Republic are not taking part). See our guide here for more information on the Unitary Patent.
The new court has exclusive jurisdiction over revocation and infringement matters relating to European Unitary Patents, and in the future also all European patents in the Member States of the court. In the meantime, patent owners will have the option of allowing their existing European patent portfolio to fall within the jurisdiction of the new court, or to ‘opt out’.
As European Patent Attorneys with relevant litigation qualifications, members of the Abel + Imray team are well placed to act as your representatives before the new court, especially in revocation proceedings where validity of a patent is challenged.
The Unified Patent Court is a new and so far untried venue for European patent litigation. No-one is yet an expert, but our attorneys have been working hard to ensure that we understand the rules and procedures, allowing us to help you make best use of this powerful new tool.
For example, for those patents within the jurisdiction of the Unified Patent Court, it is possible to bring a single revocation action effective across up to 24 member states at any time after grant of a patent. This is a big change as compared to the relatively short 9-month window provided for filing an opposition against a European patent at the European Patent Office (EPO). Revocation can be sought on the grounds familiar from EPO oppositions, including lack of novelty, lack of inventive step, insufficient disclosure, and extension beyond the disclosure of the original application.
Unified Patent Court proceedings are designed to be fast, so preparation will be key. The court is aiming for conclusion of proceedings within 12 months of commencement (although decisions will be subject to appeal). While this may have the advantage of rapid legal certainty, successful parties will need to be prepared to respond quickly with a clear focus on the issues that matter most.
In another similarity to EPO opposition proceedings, revocation actions (as well as infringement actions) will start with a written procedure during which the parties will be required to set out their full cases for their claims, counter-claims and defences. Following the written procedure, an oral hearing will be held, with the expectation that hearings will usually last just one day.
Whether you wish to take advantage of the new court to seek revocation of a third party’s patent, or ensure that your portfolio is ready for the challenge, Abel + Imray will guide you through that process.
We believe that our strength lies in our collegiate and team-focused approach, which has seen us use our combined experience across technical disciplines to handle complex, multi-case opposition proceedings at the EPO. We’re also used to working in close cooperation with other legal professionals where European patents are litigated before the national courts in infringement and revocation proceedings.
As legal representatives with the right to act before the Unified Patent Court, our attorneys expect to be hands-on practitioners in this new forum. Nevertheless, there may be cases where we think it’s in your best interests to draw in assistance from other trusted advisers, which is why we maintain working relationships with other advisers and litigators in the UK and across Europe.
We know that patent procedures are complex and can be daunting, especially when facing an adversary in a fast-paced forum such as the Unified Patent Court. You can rely on us to take the time to understand your commercial objectives, help you focus on what matters to you, and act quickly to get you the advice you need.
Contact Matthew Critten – or your usual Abel + Imray attorney – for more information.