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The Sunrise period

Once Germany deposits its instrument of ratification, which is expected to be the 1st March 2023, the sunrise period of three months will start. It is beneficial for owners of European patents and applications to decide whether to opt-in, in other words stay within the UPC, or opt-out during this period.
 
During the sunrise period Groth & Co offers:

  • Bulk opt-out discount and individual opt-out for your EP’s.
  • Ensure that your EP application will have the effects of the Unitary patent, by either requesting delay of the mention of grant or filing an early request for unitary effect  (Rule 71(3) “EPC”)
  • Monitor competitors’ opting-out strategies.

Unitary patent

The Unitary patent system includes the introduction of the Unitary patent, which is expected to start on 1st June 2023. At the start of the sunrise period, you will have the option of requesting unitary effect of your EP application and/or validate the EP as before in respective states.

Please contact our expert team or your advisor for further information.

As mentioned above, Groth & Co may help you with requesting a delay of grant or file an early request for unitary effect, see sunriseperiod.

Frequently asked questions

UPC

When will the Unified Patent Court enter into force?
The UPC is set out to enter into force the 1st June 2023, with the sunrise period starting 1st March 2023. This means that the UPC will, most likely, begin handling cases from 1st June 2023. There will be a period of at least seven years where the UPC will share jurisdiction with the national courts, with the possibility to extend the period with an additional seven-year period.
What is the sunrise period?
The sunrise period purpose is to allow for patentees to opt-out their European patents before a potential “lock-in”. The lock-in effect occurs when a proceeding, such as infringement or revocation, is initiated in the UPC after the UPC is in force. If a proceeding is initiated in the UPC the patentee is prohibited to opt-out said patent. As such the UPC has decided to enact a sunrise period, allowing for patentees to opt-out their patents before a competitor can lock-in the patent.  

The sunrise period will start from the date of Germany’s ratification of the Unified Patent Court Agreement (UPCA) and end three months after said date. The sunrise period will most likely begin on the 1st March 2023 and end 1st June 2023, when the UPC enters into force.
Which countries will participate?
17 countries will participate from start in March 2023; these are the following:

Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Lithuania, Luxembourg, Latvia, Malta, Netherlands, Portugal, Sweden, Slovenia.
Which cases can be litigated before the UPC?
The UPC will have exclusive competence over an exhaustive list of cases provided in article 32(1) UPCA. The main types of actions will be related to revocation and infringement. 

In general, the UPC will have exclusive competence for actions concerning EP that are not opted-out and Unitary patents, and after the expiration of the transitional period traditional EPs and applications. During the seven-year transitional period, actions regarding an EP may be brought before national courts as well as the UPC. For more details regarding the extension of their exclusive competence, see below art. 32(1) UPCA:
 
(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
 
(b) actions for declarations of non-infringement of patents and supplementary protection certificates;
 
(c) actions for provisional and protective measures and injunctions;
 
(d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;
 
(e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;
 
(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;
 
(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;
 
(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and (i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.
What are the implications of the UPC?
The Unified Patent Court (UPC) is an international court that will deal with proceedings such as infringement and revocation, meaning that if you choose not to opt-out you will be able to initiate infringement proceedings in the UPC.
 
The most important aspect of the UPC is that the owner of EPs, that are not opted out, will have the benefit of initiating a central infringement proceeding with effect in all the member states of UPC which the EP is validated in. However, the owner risks having the same EP revoked in these states, and once a revocation action has been filed you will only have 3 months to prepare a defense.
How will the UPC be structured?
There will be two court instances, with the possibility for the EU Court of Justice to issue preliminary rulings in both instances.
 
The first instance is divided into local, regional and central divisions. The premise is that local and regional divisions handle infringement cases while the central division has exclusive jurisdiction over revocation actions and declarations of non-infringement.
 
Some countries, such as Germany, have four local divisions. Whereas Sweden is included in the Nordic-Baltic regional division together with Lithuania, Estonia, and Latvia. This is the only regional division thus far.
 
There will be three central divisions located in Paris, Munich and probably Milan (the location is still undecided). The industry for which the patent relates to decides which central division handles the case.
 
The second instance is a Court of Appeal in Luxembourg and will hear cases appealed in first instance, i.e. appealed decisions in local, regional and central division.
How will counterclaims in local and regional divisions be handled?
Local and regional divisions will generally hear cases regarding infringement actions and counterclaims for revocation in the same proceeding. However, the local and regional division has the following options:
 
a)    Deal with both the infringement claim and the invalidity claim in the same process, when a suitable technically competent judge has been assigned to the process,

b)    Refer the counterclaim to the central division and deal with the infringement claim,

c)     As “b” but suspend the infringement claim,

d)    Refer the entire process to the Central Division, however, both parties need to agree to this.
What language will the proceedings before the UPC be held in?
The language of proceedings before any local or regional division of the Court of First Instance is an official European Union language designated by the states sharing a regional division. Sweden will be part of the Baltic regional division, which has decided to designate English. If both parties agree to use the language in which the patent was granted this is possible, provided that the panel hearing the case approves.
 
Before the central division, the language of proceedings will be the language in which the patent was granted (English, French or German). The majority of EP patent application are in English or German, therefore even the proceedings in the central division in Paris will typically be held in English or German.
 
In the Court of Appeal, the language of proceedings will generally be the language that was used in proceedings before the Court of First Instance of that case.
What will it cost to bring an action before the UPC, and will it be more cost effective than the existing system?
The total cost for an action before the UPC will probably be significantly higher than one national proceeding since the court fees are relatively high and the procedural demands that is placed on parties. The UPC proceedings will probably only be cost effective if compared to three or four national cases due to the front-loaded procedural system described above.
 
There will be heavy demands on the written procedure preceding the oral hearing. The claimant must produce all evidence and arguments in the statement of claim, and the defendant must produce all evidence and arguments in the statement of defence (front-loaded procedural system). This combined with the fact that the deadlines are comparably short will probably result in higher costs.
 
Also, the court fees must be considered high which is described below.
What are the court fees for bringing an action before the UPC?
The court fees for an action before UPC are in detail explained in Rule 370 Rules of Procedure of the Unified Patent Court. The fees, for bringing an action before the UPC, consist of a fixed amount based on the type of action and, for some cases, a variable amount based on the value of the action. Small enterprises and micro-enterprises may only be required to pay 60 percent of the fixed and value-based fees.
 
For infringement actions there is a fixed court fee of EUR 11,000 plus a value-based fee of up to EUR 325,000, if the value of the infringement action proceeds EUR 500,000. For revocation actions, the court fee will be EUR 20,000, without a value-based fee.
 
Compared to fees paid to Swedish courts, which is around EUR 280, the fees must be considered considerably higher.
 
For counterclaims for revocation in an infringement proceeding and a counterclaim for infringement will be subject to the same costs. In other words, the costs would be added to the costs of the main claim.
 
An appeal to the Court of Appeal will generally cost the same as in lower court and will be divided in the same way in relation to the different types of action.
 
Fixed fees:
-       Revocation action (R. 47): EUR 20,000
-       Counterclaim for revocation (R. 26): Same fee as the infringement subject, limited at EUR 20,000
-       Infringement action (R. 15): EUR 11,000
-       Counterclaim for infringement (R. 53): EUR 11,000
-       Action for declaration of non-infringement (R. 68): EUR 11,000
-       Application for provisional measures (R. 206.5): EUR 11,000
-       Application to determine damages (R. 132): EUR 3,000
 
Value-based fees for infringement action:
What are the possibilities of recovering costs before the UPC, and what is the risk of being ordered to pay costs if the other party prevails?
The possibilities, and risks, of recovering reasonable legal costs and expenses of the successful party is explained in Article 69 UPCA, Rule 152 and Rule 370.6 of Rules of Procedure of the Unified Patent Court.
 
As commonly the case, the unsuccessful party will generally have to pay the other party’s cost of proceedings, including legal fees etc. However, a ceiling has been imposed on the amount that the successful party may claim in proportion to the value of the action. The ceiling for recoverable costs is at EUR 38,000 for proceedings valued up to and including EUR 250,000 and up to EUR 2,000,000 for proceedings with a value of more than EUR 50,000,000.

Unitary patent

What is the difference between a Unitary patent and a European patent?
What is unique about UPs is the possibility of obtaining a single patent for the, at present, 17 member countries. This differs from the traditional European patent (EP) which, after grant, serve as independent national patents in those countries in which the patent is validated.
How do I apply for a Unitary patent?
The process will be the same as the current process when applying for an EP before the EPO.

The difference in procedure comes after the EPO  issues the Communication pursuant to R 71(3); the official announcement of the intention to grant an European Patent. The Applicant is given a one-month deadline from the receipt of the official Communication to decide whether to file a request for a Unitary patent.

There is a possibility to postpone the issuance of the intention to grant for pending patent applications if the patentee desires to designate convert of their EP application into a Unitary patent.

Workflow

Groth & Cos competent expert team includes Paralegals, European Patent Attorney and Litigators.

Groth & Co's dedicated team of experts will guide you between the pitfalls of the Unitary Patent system. The team will assess your business needs in the light of the relevant changes in law, adapt your strategy to business objectives to maximize benefits while minimizing risks, and implement the strategy.

Our Expert team

Our European Patent attorneys have extensive experience in litigation as well as European Patent Office opposition and appeal proceedings in a range of technical areas. These skills will apply to pursuing litigation at the UPC.
NAME
CONTACT
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Cao Cao

European Patent Attorney

中文
Engelska
Svenska

Claes Westerlund

Partner
European Patent Attorney

Svenska
English
Deutsch

Karin Crafoord

Partner
Attorney at Law
Litigator

Svenska
English
Français

Mathias Loqvist

Managing Partner
Head of Patent Dept.
European Patent Attorney

Svenska
English
Deutsch

Nabil Sebaa

Partner
Patent Attorney

Français
العربية
Svenska
English

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