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15 May 2023FeaturesPatentsNina O'Sullivan and Campbell Forsyth

Protective letters: a significant tool at the UPC?

Much of the current analysis of the Unitary Patent and Unified Patent Court (UPC) is, of course, focused on the opportunities for patentees. With the UPC set to open its doors for business on June 1 2023, patent-owning businesses are now able to put into place carefully considered plans for structuring, and enforcing, their patent portfolios in Europe.

While many patentees will relish the possibility of (almost) pan-EU relief (including provisional injunctions), those concerned at the potential implications of a revocation action in the UPC against their classic European Patents will also have reached decisions on opting those patents out of the UPC's jurisdiction. The three-month sunrise period to allow such opt-outs to be registered before the start date of the UPC began on March 1 2023, with opt-outs taking effect on the date of entry into force of the Agreement on a Unified Patent Court (UPCA) on June 1 2023.

As of March 23 2023, some 1,800 opt-outs had been lodged with the UPC registry (pursuant to Art. 83(3) of the UPC Agreement, and Rule 5 of the UPC Rules of Procedure), and no doubt many more will be lodged in the remaining sunrise period to avoid a 'day one' revocation claim being lodged. What makes the opt-out particularly attractive, of course, is that (provided no action has been brought in a contracting member state court against the relevant patent), the opt-out can at an appropriate time be withdrawn in order then to seek pan-EU relief (in the form of an injunction, damages etc) (Article 83(4) UPCA).

Options for potential defendants in the UPC

This article focuses on the other side of the coin—ie, the options available for those that might be at risk of an infringement action in the UPC, either in relation to a Unitary Patent or a non-opted out classic European Patent, and who will therefore be concerned about the risk of both final and preliminary injunctive relief and financial remedies across relevant contracting member states.

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5 December 2022   Sunrise period extended over concerns about access to court’s case management system | New period and start date announced by Klaus Grabinski and Johannes Karcher | Full details of new timings.
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10 March 2023   Unified Patent Court temporarily removes some functionality from opt-out system for ‘privacy and security’ reasons | New guidance also given on registration of representatives.