22 February 2023
The “sunrise period” of the unitary patent system has arrived. It is imperative for applicants and owners of European patents (as well as supplementary protection certificates) to know what this period really implies and which actions can be taken during it, in order to speed up the procedures and avoid possible inconveniences when the unitary patent system enters into force.
What is the “sunrise period” and how long does it last?
The unitary patent system, comprising the European patent with unitary effect on the one hand and the Unified Patent Court (UPC) on the other, will enter into force on June 1, 2023. This means that the “sunrise period”, which covers the three months previous to the start of the system itself, begins on March 1, 2023 and ends on June 1, 2023.
This “sunrise period” is a stage prior to the start of the unitary patent system (actually, the day of the entry into force of the system implies the end of this period) which is intended to give applicants and owners of European patents (and supplementary protection certificates) time to carry out the appropriate procedures that will allow them to be properly prepared for the start of the unitary patent system.
Specifically, during this period (and, therefore, in advance of the entry into force of the system), certain actions related to the unitary patent system can be brought forward, avoiding the possible delay that would be caused by having to wait for the entry into force of the system to carry them out (a delay that, in certain circumstances, may have serious negative effects).
In addition, by bringing forward actions related to the unitary patent system, the existence of this period makes it possible to reduce the flood of requests that are expected during the first days of operation of the system, thus reducing to a certain extent the consequent congestion and its negative consequences, that may occur during those first days.
What actions can be taken during the “sunrise period”?
The main action that can be taken during this period is the “opt-out” from the UPC of a European patent application, a European patent or a supplementary protection certificate (SPC).
There are also two other actions that can be taken before the entry into force of the unitary patent system, which, due to their interest, will also be discussed in this article. These are transitional measures implemented by the European Patent Office (EPO) to facilitate the application for unitary effect for those European patents granted close to the entry into force of the unitary patent system. These transitional measures are:
1) Early request for unitary effect, and
2) Request for a delay of the grant.
Initially, these measures were also going to be available from the beginning of the sunrise period, but due to the delay of the sunrise period, the EPO has decided to rescheduled them and they can be requested from January 1, 2023.
The following will explain in more detail these three actions:
Opt-out
The Unified Patent Court (UPC) will have jurisdiction, for all the countries participating in the system (17 as of today) in a centralized manner, over patents with unitary effect, classic European patents (European patents that have not opted for unitary effect) and Supplementary Protection Certificates (SPCs) of a product protected by an European patent.
However, while a European patent for which unitary effect has been requested or an SPC based on a patent with unitary effect is automatically and compulsorily subject to the jurisdiction of the UPC, an applicant or owner of a classic European patent or an SPC based on a classic European patent (by “classic”, it is meant a patent which has not yet been granted or which, having been granted, has opted for the validations existing so far and not for the patent with unitary effect), may decide whether it wishes jurisdiction, for infringement or invalidity cases, to be exercised by the UPC or to continue to be exercised by the national courts in each country (as happened before the entry into force of the unitary patent system). By default, the UPC will have the jurisdiction, but if the right holder wishes only the national courts to have jurisdiction, he may request it by making an “opt-out” request to the UPC.
In other words, the owner of a classic European patent, the applicant of a published European patent application or the holder of a SPC deriving from a classic European patent may waive the jurisdiction of the UPC for actions of invalidity or infringement of this IP rights. To do so, he must request before the UPC the “opt-out” of such rights (SPC, European patent application or European patent).
This opt-out request can be made from the beginning of the sunrise period until one month before the end of the transitional period (which will last a minimum of 7 years from the entry into force of the system, extendable for further 7 years). At the end of the transitional period, both unitary patents and “classic” European patents (which have not been opted-out) will be over the jurisdiction of the UPC.
Opting out in time has very important implications, since for an applicant/owner of a patent or SPC it may be essential, for several reasons, that the jurisdiction over its patent remains with the national courts (for example, for logistical reasons, costs, because national courts are more convenient forums for its interests, because of the initial uncertainty of the operation and results/sentences of the UPC, because it does not want its patent to be revoked in a centralized way for many countries…)
It must be pointed out that, if any lawsuit (e.g. for revocation) is filed before the UPC for an IP right (patent/SPC), after the filing of the lawsuit such IP right will be bound to the UPC without the possibility to “opt-out”. Therefore, if an applicant/owner wants to request the “opt-out”, he should do it as soon as possible to avoid that a third party files a lawsuit before the UPC, which will imply that the competent court will be the UPC and the possibility of “opt-out” will vanish.
Hence the importance of the “sunrise period” for the “opt-out”, since if you want the jurisdiction over a European patent/SPC to remain with the national courts and not with the UPC (which can be critical in several cases for the reasons mentioned above), it is essential to request the “opt-out” during the “sunrise period”. This allows the IP right for which it has been requested, to be out of the jurisdiction of the UPC from the moment of its entry into force, thus avoiding the possibility of a third party filing an action (e.g. for revocation) before the UPC on the first day of entry into force (which would force the court having jurisdiction over that registration to be the UPC).
It should also be noted that an “opt-out” request is reversible at any time. Thus, an applicant/owner of an IP right that changes its mind and decides from a given moment onwards that it prefers the jurisdiction of the UPC, can make what is called an “opt-in” (i.e., cancel the previous “opt-out”). Once an IP right returns to the jurisdiction of the UPC (“opt-in”), it cannot be “opt-out” again.
Therefore, in view of the “sunrise period”, it is important that the owners/applicants of IP rights (European patents/SPCs) takes into account all the relevant factors (countries where the company operates, countries where the business competitors may act, strength of the patents, behaviour of the business competition, previous or likely future legal actions…) to make a decision on whether it is preferable to keep their IP rights under the jurisdiction of the UPC or not. And if you come to the conclusion that it is convenient to “opt-out” all (or part of) your IP rights, you should do it during the “sunrise period” because afterwards, for the reasons stated in the previous paragraphs (filing by third parties of lawsuits before the UPC) it may be too late.
Early request for unitary effect
This is the first of the transitional measures introduced by the EPO to help users in the early stages of the unitary patent system.
Only those European patent applications for which the EPO has issued a communication of Intention to Grant (according to Rule 71(3) of the European Patent Convention) will be eligible for this measure. This Rule 71(3) communication states that the applicant must approve the text of the patent to be granted, translate the claims and pay the corresponding fees within a period of 4 months, so that the patent is subsequently granted and the grant is published.
Under normal circumstances (i.e. once the unitary patent system enters into force), in order to request unitary effect on a patent, the patent grant must have been published and then a period of one month is opened for the patent owner or its representative to request unitary effect before the EPO of the granted patent (preferably using the form created by the EPO for this purpose, namely Form 7000). In order to request unitary effect, no fee will have to be paid before the EPO but, together with such request for unitary effect, a translation of the granted patent will have to be included (this translation provision is in force at least for a period of 6 years, extendable to 12 years, from the beginning of the unitary patent system). Such translation must be into English (if the European patent is in German or French) or into any other language of the European Union (if the European patent is in English).
This transitional measure of early request, however, allows requesting the unitary effect (accompanying the request with the corresponding translation of the patent) before the unitary patent system enters into force and before the grant of the patent is published; the EPO will keep this request and will register the unitary effect automatically when the system enters into force (if the request fulfils all the appropriate requirements) and, of course, after the grant of the patent has been published (since it is a prerequisite for the registration of the unitary effect that grant of the patent has been published and that said publication of the grant of the patent takes place after the entry into force of the system). The EPO will inform the patent owner of the date on which the unitary effect has been registered.
This early request can only be made until the unitary patent system enters into force. After the entry into force, the unitary effect can only be requested after publication of the patent grant as above explained.
Of course, regardless of the early request for unitary effect, the patent applicant must comply with the other requirements indicated in the communication of Intention to Grant (payment of fees, translation of the claims…) as in any other case since, otherwise, the patent will not be granted and, therefore, its unitary effect will not be registered.
Request for delay of grant
As for the other measure, only those European patent applications for which the EPO has issued a communication of Intention to Grant (according to Rule 71(3) of the European Patent Convention) are eligible for this measure.
This process allows the applicant to postpone the grant of its patent. Upon receipt of this request for delay of grant (if it meets the necessary requirements), the EPO will postpone the publication of the grant until after the entry into force of the unitary patent system and, therefore, unitary effect can be requested for this patent (since if the grant is published before the date of entry into force of the system, the patent would be outside the possible unitary effect). Thus, through this process, patents that would have been outside the possibility of unitary effect for a few days (their grant would have been published before the entry into force of the system), can still benefit from the unitary effect.
This request for delay of the grant must be made before (or at the same time) as the approval by the patent applicant of the text of the patent to be granted (such approval is made in response to the communication of Intention to Grant). And, of course, the patent applicant must comply with the other requirements indicated in the communication of Intention to Grant (payment of fees, translation of claims…) as in any other case, otherwise the patent will not be granted.
Once the patent grant is published, the unitary effect must be requested (if so desired) by complying with the corresponding requirements. Alternatively, such a request for delay of grant can be combined with an early request for unitary effect; in that case, the publication of the grant will be delayed until the entry into force of the system and, once published, the EPO will register the unitary effect automatically, as explained in the previous section.
Such request for delay of grant, can only be made until the day of entry into force of the system (after the entry into force, the publication of the grant will follow the usual procedure and schedule) and, the request for delay of grant must be requested using a specific form for this purpose provided by the EPO (specifically Form 2025).
Conclusion
The beginning of the “sunrise period” implies that the applicant/owner of a European patent (or SPC) must take decisions and perform certain actions even before the entry into force of the unitary patent system, to ensure a proper working of its Intellectual Property strategy.
For a detailed explanation on the basic concepts of the unitary patent system you can consult the following article https://www.hyaip.com/en/news/unitary-patent-key-points-for-requesting-unitary-effect/. And, in general, for more information on the unitary patent system, you can consult the unitary patent section of H&A https://www.hyaip.com/en/unitary-patent-a-new-scenario-in-europe/
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