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Avoiding the unified patent court – Do our eyes deceive us?

Keltie LLP

K2 IP Limited

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Court (Small)Over at IPCopy we’ve been absorbing the latest version of the agreement on the unified patent court, which you can find here.

We’ll be posting an informative Q&A-style blog entry in the next few days, but in the meantime, we’ve noticed an interesting quirk in the fine print (maybe, have a look below).

Article 58 deals with the transitional provisions and, in summary, states that:

  • There will be a transitional period of at least 7 years (i.e. until 1 January 2021), which may be extended by a further 7 years (i.e. until 1 January 2028).
  • Up until 1 month before the end of this transitional period, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period may opt out of the exclusive competence of the unified patent court.
  • The proprietor or Applicant can withdraw the opt-out at any time.

By our calculation, this means that an Applicant can file a patent application up until 30 November 2020, and, on filing, opt out of the unified court system, giving the national patent courts competence for the life time of the patent, until 30 November 2040. If the Applicant changes its mind, it can opt back in again at any time.

If the transitional period is extended by 7 years, this will apply to patent applications filed up until 30 November 2027, giving the national patent courts competence until 30 November 2047!

Most of the members of IPCopy hope to be retired by this time (this writer sadly not included). Could it really be possible for many IP professionals to avoid the unified patent court for the entirety of their careers?

What do you think?

Emily Weal – 19 Dec 2012


8 Comments

  1. [...] including the fact that a patentee could potentially opt out of the unified patent court until 2047, and that if an infringement action is brought by an exclusive licensee, bifurcation is all but [...]

  2. Walter says:

    It seems to me that many lawyers and patent attorneys are very negative about the unitary patent because they lack business insight. One patent. 300 million consumers (or more). No hassle. Ideal !! An entrepeneur has better things to do than think about validations and translations and associated costs. If the patent is litigated, the single procedure is also ideal for its relative simplicity. No more legal teams speaking five different languages and holding conference calls from five locations that are impossible to follow. The whole idea of avoiding the unitary patent until retirement can only by floated by a lawyer, not by a businessperson.

    Walter Hart

  3. ipcopymark says:

    Walter

    Thank you for your comment.

    The post above was only really meant to be highlighting what we saw as an interesting quirk and consequence of the language of the agreement. For an overview of the unitary patent system please see our Q&A post.

    Some people – including industry bodies, legal institutes as well as attorneys – have raised concerns about the proposed system. However, from our point of view, while the unitary patent system may not be perfect it is obviously a massive change for European patent law and its main purpose is very worthwhile. As attorneys we will, assuming the necessary ratifications are made and the system enters into being, be advising our clients of all facets of the system – the good, the bad and the quirky – so that everyone is fully informed and the best commercial decisions can be taken by the patent applicant.

  4. [...] courts could still have competence as a result of Article 83 (Draft Article 58 back when we posted this), and we thought this was an opportunity to share them with you, and [...]

  5. [...] an earlier post – Avoiding the unified patent court – Do our eyes deceive us? – we asked whether the transitional provisions of the unified patent court agreement (see [...]

  6. Anonymous says:

    Would an SPC extend this further?

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