Quarterly International Ip Law Update

• Jurisdiction: European Union
• Citation: Vol. 48 No. 1
• Publication year: 2023
• Author: David Tseng

QUARTERLY INTERNATIONAL IP LAW UPDATE

AUTHORS

David Tseng

MediaTek Inc.

Mariana Noli

Noli IP Solutions PC

Leaf Williams

Reichman Jorgensen Lehman & Feldberg LLP

WHAT IS THE UNIFIED PATENT COURT?

Expected to begin operations in June of 2023,¹ the UPC is a new patent court that is available within European Union ("EU") Member States that have ratified the UPC Agreement.²Participants comprise a subset of countries that have signed the European Patent Convention ("EPC").³ Practically speaking, the UPC will not apply to EPC countries that are not also EU members (e.g., Switzerland and the United Kingdom) or to EU members that have yet to ratify the UPC Agreement (e.g., Iceland, Spain, and Poland).

A patent granted by the European Patent Office ("EPO"), is not a patent right within a specific country, but a bundle of national patents that have to be individually enforced (save for the opposition proceedings before the EPO) and which can be challenged in each of the individual member states. The European Patent ("EP patent") does not have automatic effect in all 38 member states. Instead, the patent owner must choose to apply for protection in specific member states or all the member countries. The cost may increase as protection is sought in more countries.

Whereas an EP patent requires separate validation in each of the 38 member states, by contrast, a UPC patent ("UP patent") is a single patent with unitary effect in all participating member states—which will now be regarded as one territory under the jurisdiction of the UPC. By, default, a UP patent is recognized in all EPC member states participating in the UPC when it comes into effect, unless there is an opt out.⁴

The application process for a UP patent is built on top of the application process for EP patents. Once granted, the patent...