Wragge & Co held an excellent breakfast seminar yesterday (lovely bacon butties!) on the Unified Patent Court. The seminar provided a good overview of the unitary patent package as it stands today as well as highlighting outstanding issues and areas of interest.

One issue that was raised was the possibility of a “sunrise” provision being introduced to give patentees of nationally validated EP patents a protected period after the system goes live in which to register an opt out of the competence of the unified patent court.

Such a sunrise provision is being discussed because of the possibility of tactical revocation actions being brought by third parties against such nationally validated EP patents in order to fix those patents within the competence of the unified patent court before an opt out (from the UPC) has been filed by the patent proprietor.

Article 83 of the unified patent court agreement defines a transitional provision under which the owners of EP patents (not unitary patents) can opt out of the competence of the unified patent court. Under Article 83(3) and 83(4) UPC Agreement as soon as some kind of court action is begun then the patent owner is stuck in whatever regime they are in (either “opted out” and therefore able to use national courts or “opted in” and within the realm of the UPC).

This opens up the possibility that third parties may start revocation actions at the UPC in order to fix a particular patent within the competence of the UPC. The patent owner would then be unable to opt out even if they wanted to.

The impact of Article 83 highlights the need for patent owners to decide before the system goes live whether they want to use the UPC or not (for EP patents & patent applications filed before or during the transitional period) and to get their opt out requests in as early as possible.

At the seminar yesterday the concept of a sunrise period was raised after the unitary patent system goes live under which patent owners would have a protected period within which to register their opt out requests without the threat of a third party action taking the decision out of their hands.

It is noted that there is nothing in the UPC Agreement that provides for such a period and so presumably this would have to be covered off in the currently draft Rules of Procedure of the UPC.

Mark Richardson   14 March 2013