The UPC preparation phase has officially started – what does it mean for Polish clients?

The unitary EU patent system has been a work in progress for decades already and even though the Agreement on a Unified Patent Court (UPC) was signed in February of 2013, the implementation of the proposed solutions has been fraught with obstacles. The most significant hurdles occurred on the end of those states whose ratification of the Agreement was a precondition for its entry into force: the United Kingdom (the issue of Brexit) and Germany (complaints filed to the Federal Constitutional Court). We have already written about this long-running series starring the UPC in our Legal Reports (see: WTS Legal Report No. 6/2020, No. 7/2020, and No. 1/2021); this time, however, the prospect of its finale seems realistic and imminent.

As the new year 2022 begins, we find ourselves in an entirely new phase. Austria has ratified the Protocol on the Provisional Application of the UPC Agreement. The Agreement is applied since 19 January. Thus, the preparations for the launch of the UPC have entered an advanced stage and we can expect it to start functioning in late 2022 or early 2023. Currently, the recruitment of judges is ongoing; soon decisions are expected with regard to new seats of divisions that originally were supposed to be located in the United Kingdom.

It must be remarked that Poland is not among 25 EU states that have signed the UPC Agreement (even though, it had previously participated in an enhanced cooperation in the EU in that area). The decision to stay outside the unitary patent system was justified by concerns about its economic impact. The Polish government adopted a position that it would be more reasonable to wait and monitor the progress of implementation in other Member states.

The UPC will have exclusive jurisdiction over actions for infringement or for revocation of unitary patents (patents providing uniform protection and having equal effect in all the participating Member States) as well as European patents granted by the EPO.

Taking into consideration the broad scope of its competence, it cannot be expected that the launch of the UPC would not affect Polish entrepreneurs, especially those who are present in the European markets: they sell their goods or offer services there. It will be necessary to make a key business decision regarding a future protection strategy.

In some cases, filing for a unitary patent seems an appropriate choice – an entrepreneur who obtains it, will benefit from protection in all 24 states participating in the system. When it comes to protection within Polish borders, two traditional paths remain available: either applying for a patent to the Polish Patent Office or a validation of a European patent. Actions for infringement or for revocation would fall under the jurisdiction of Polish courts, instead of the UPC.

Let us add that Article 83 of the UPC Agreement provides for a seven-year transitional period, during which two specific solutions are going to apply:

  • During the transitional period an action for infringement or for revocation of a European patent may still be brought before national courts;
  • A proprietor of a European patent granted before the end of the transitional period (or an applicant who filed an application prior to the end of the that period) shall have the possibility to opt out from the exclusive competence of the Court by submitting a notification to the registry.

The same options are also provided with regard to supplementary protection certificates (SPCs) issued for products protected by European patents.

In the following weeks we will publish on our website resources on specific procedural issues concerning the functioning of the UPC.