Louise AMAR, auteur sur UPC Blog by amar goussu staub

4 May 2018

Five countries have now ratified the Protocol on Privileges and Immunities

Brexit and the German constitutional challenge

During the first quarter of 2018 four countries (France, Luxembourg, Italy, UK) ratified the Protocol on Privileges and Immunities. This means that there is now a total of five ratifying countries.

The Protocol guarantees that the Unified Patent Court will benefit from privileges and immunities, necessary for the exercise of its functions. It provides notably for:

the inviolability of the premises of the Court, as well as those of archives and documents (Articles 3 & 4)
the immunity of the Court, its property, assets and funds (Article 5)
the immunity of representatives of a state party (Article 6)
the privileges and immunities of the judges, registar and staff (Articles 9 & 10)

These guaranties will apply uniformely to all participating member states .

However, according to article 18, the Protocol will come into effect “30 days after the date on which the last of the four state parties – France, Germany, Luxemburg and the United Kingdom – has deposited its instrument of ratification“. Germany’s ratification will thus trigger its entry into force -as well as the entry into force of the UPC.

2 May 20182 May 2018

The UK ratifies the UPC Agreement and the Protocol on Privileges and Immunities

The UK government announced on 26th April 2018 that the UK had ratified the UPC Agreement.

This ratification is particularly significant. Indeed, the UK is one of the three member states, with France and Germany, whose ratification is mandatory for the Agreement to come into force.

However, the UK’s ratification comes after the Brexit referendum in June 2016, which jeopardised the UK’s participation to the UPC. Indeed, before the UK leaves the EU, it must secure its participation to the UPC by way of international agreements and amendments of the UPC Agreement.

The UK’s ratification of the UPC also raises the question of the UK’s respect of EU law. Article 20 of the UPC Agreement in fact states that ” (t)he Court shall apply Union law in its entirety and shall respect its primacy“.

Regarding these issues, the UK government declares laconically that “(t)he unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU.“

The UK also ratified the Protocol on Privileges and Immunities

On 26th April 2018 the UK also ratified the Protocol on Privileges and Immunities. This protocol will entitle the Unified Patent Court to benefit from privileges and immunities necessary for the Court to exercise its functions. So far 5 countries have ratified it.

What does these ratifications mean for the UPC?

The UK’s ratifications are strong indicators of its long term commitment to the UPC. The UK’s participation to the UPC is good news as it will ensure the atractivity of the Court. This ratification may also speed up the entry into operation of the Court, regularly postponed since the signature of the UPC Agreement.

Therefore, the entry into force of the UPC Agreement now only requires Germany’s ratification. The latter however is on hold. In fact, the German constitutional court must decide whether the German law passed to allow ratification is constitutional.

See here for more posts on Bexit and the UPC.

See here for more posts on Germany’s ratification.

12 April 20186 September 2019

UPC: Luxembourg ratifies the Protocol on Privileges and Immunities

Luxembourg has become the third country to ratify the Protocol on Privileges and Immunities of the Unified Patent Court on 5th April 2018.

The Protocol will entitle the Unified Patent Court to benefit from privileges and immunities necessary for the Court to exercise its functions.

France ratified the Protocol in February 2018 while the Netherlands deposited its instrument of ratification in January 2017. Luxembourg’s ratification is nonetheless particularly significant. Indeed, the Protocol can only enter into force once ratified by France, Germany, the UK and Luxembourg.

However while both the UK and Germany have passed laws allowing ratification of the Protocol, the Brexit deal and a complaint before Germany’s constitutional court have slowed down their ratifications. The Protocol’s entry into force is thus on hold until both issues have been settled.

26 March 201827 March 2018

What should you know about the Unitary Patent?

The Unitary Patent should soon add a new level of protection for patent owners in Europe. This post therefore presents the essential characteristics of the Unitary Patent, and how it differs from the current patenting system.

What is the current patenting system in Europe?

In Europe, it is currently possible to apply for a patent through the national, international, and European routes.

Under the national route, applicants can apply for a patent in one country at a time. The applicant must file the application at the IP offices in the countries where she seeks protection. The national route leads to national rights and confers protection at national level.

Under the international route, the Patent Cooperation Treaty (PCT) provides a unified procedure for 152 different contracting states. A PCT application allows patent holders to simultaneously seek patent protection in a large number of countries by filing a single “international” patent application. It is not necessary to file several separate national or regional patent applications. The granting of patents remains however under the control of the national or regional patent offices.

Under the European route, applicants are granted European patents for some or all of the contracting states to the European Patent Convention (EPC) and to the current extension states (Bosnia and Herzegovina, Montenegro). A European patent is a bundle of national patents. It has the effect of and is subjected to the same conditions as a national patent granted by that state. This is true for each of the contracting states for which it is granted.

What is a Unitary Patent?

A European patent with unitary effect or Unitary Patent is a new type of European patent, to which unitary effect is given. The Unitary Patent is not a new intellectual property title but a new legal characteristic given to an already existing title: the European patent.

The Unitary Patent will be granted by the EPO under the rules and procedures of the EPC. It will co-exist with the current patent system. Patent proprietors will be able to choose between European patents, national patents and Unitary Patents.

It will not be possible to obtain a European patent and a Unitary patent for the same invention.

Which legal instruments created the Unitary Patent?

In March 2011, the Council of the European Union issued a decision authorising enhanced cooperation for the creation of a unitary patent protection.

Enhanced co-operation is a mechanism set out in the Lisbon Treaty. It allows 9 or more EU member states to establish advanced integration or cooperation in any area within the EU structures, without the other member states being involved.

The Unitary Patent package consists of:

Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.

Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

The Agreement on a Unified Patent Court (UPC Agreement), an agreement between EU countries to set up a single and specialized patent jurisdiction. This Agreement must still be ratified by most Member States. The UPC Agreement will enter into force on the first day of the 4th month after the deposit of the 13th instrument of ratification, including the ratification of Germany, France and the United Kingdom. These 3 countries were indeed the 3 Contracting Member States in which the highest number of European patents had effect in 2012. Currently 15 Member States including France have ratified the UPC Agreement.

What are the goals of the Unitary Patent?

The Unitary Patent aims at:

Reducing the current cost of patenting. Patenting an invention in Europe can be costly, as once granted, a European patent can only be enforced at national level. This may also entail translating it into the official language of the country concerned and paying validation and annual renewal fees in multiple states. The Unitary Patent on the contrary will offer simpler and cheaper translation requirements. It will also be subject to a single set of renewal fees. This will allow for a reduced patenting cost.

Improving legal certainty and reducing litigation costs. Patents on inventions with a high market value are frequently the subject of litigation. Due to the lack of a unified litigation system, this leads to parallel lawsuits in different countries and divergent outcomes. The Unitary Patent will be under the exclusive competence of the Unified Patent Court. It will thus depend only on a single set of rules. This should guarantee a unified application of the law and prevent any parallel and discordant law suit. Finally, the decisions of the UPC, will have authority in all participating Member States.

When will it be possible to apply for a Unitary Patent?

Patent holder will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. It will however not be possible to request unitary effect for patents granted before that date.

In which countries will the Unitary Patent be available?

The Unitary Patent will be available in the participating Member States that have signed and ratified the UPC Agreement.

26 countries (all EU Member States besides Spain and Croatia) have adopted the European Regulations. 25 countries (all EU member states except Spain, Croatia and Poland) signed the UPC Agreement. However, only 15 Member States have so far ratified the UPC Agreement.

The Unitary Patent will be available for the territories of the Member States that have ratified the UPC Agreement. Hence although the Unitary Patent may one day be available for 26 countries, it will start off with less countries. The Unitary Patent will however cover the territory of at least 17 countries (ie the 15 member states that have already ratified the UPC Agreement + UK and Germany). The extension of the Unitary Patent’s territorial coverage will thus be progressive as the rest of the Member States will ratify the agreement over time.

Renewal fees:

To maintain a Unitary Patent, the patent holder will have to pay an annual renewal fee directly to the EPO.

The Select Committee endorsed in December 2015 the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The True Top 4 corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries. These are: Germany, France, UK and the Netherlands. The True Top 4 gives also special consideration to the situation of the SMEs.

2nd year:	35 EUR	12th year:	1, 775 EUR
3rd year:	105 EUR	13th year:	2, 105 EUR
4th year:	145 EUR	14th year:	2, 455 EUR
5th year:	315 EUR	15th year:	2, 830 EUR
6th year:	475 EUR	16th year:	3, 240 EUR
7th year:	630 EUR	17th year:	3, 640 EUR
8th year:	815 EUR	18th year:	4, 055 EUR
9th year:	990 EUR	19th year:	4, 455 EUR
10th year:	1, 175 EUR	20th year:	4, 855 EUR
11th year:	1, 560 EUR

For more informations on the Unitary Patent check the Unitary Patent section of the blog.

23 March 20186 September 2019

Encouraging steps towards opening of Unified Patent Court

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

Since the Brexit referendum the future of the UPC has been in jeopardy and, despite the optimistic schedules published by the UPC Preparatory Committee, its opening is still uncertain. Recently however, member states have taken encouraging steps. The UPC may thus soon become a reality.

Key steps in Belgium:

The Parliament amended its legislation to accomodate the Unitary Patent and the Unified Patent Court. This amendment brings some Belgian patent law exceptions in line with those in the UPC Agreement. They inlcude notably the plant variety protection, the “Bolar” type exceptions and the use of information obtained under Directive 2009/24. Similarly, Belgium will carry out a linguistic check of other patent law exceptions to ensure coherence. Finally, it will introduce a provision enabling patent owners to benefit from the protection of a European Patent -without unitary effect. Patent owners will thus enjoy some protection even if their request for a unitary patent is rejected.

Key steps in Germany:

The challenge, of the legislation allowing for the ratification of the UPC agreement, before the German constitutional court has progressed. The German Bundestag and Federal government as well as by the German Federal Bar Association (BRAK) and Bar Association (DAV), the European Patent Lawyers Association (EPLAW), the German Association for the Protection of Intellectual Property (GRUR) and the European Patent Litigators Association (EPLIT) have in fact all filled statements.

Key step in the UK:

The Unified Patent Court (Immunities and Privileges) Order 2018 was made on 8th February 2018 after both houses of Parliament approved it. It confers legal capacity to the Unified Patent Court and grants immunities and privileges to its representatives (Judges, Registrar, Deputy-Registrar and staff). This comes after the Scottish statutory instrument which was approved by the Scottish Parliament in October 2017 and was made by the Privy Council in December 2017. This statutory instrument was the last step for the UK to complete before ratifying the UPC Agreement.

Key steps in France:

The French Senate adopted on 20th Decembre 2017 the bill authorising the ratification of the UPC Protocol on Privileges and Immunities, after it was adopted by the National Assembly on 4th October 2017. The law authorising such ratification was subsquently passed on 30th December 2017 and the Protocol was eventually ratified on 14th February 2018.

Key steps in Italy:

Italian parliament passed two laws at the end of 2017. On 25th October 2017, a law allowed the Italian government to amend the Italian Intellectual Property Code and align it with the Unified Patent Court Agreement, which Italy ratified in 2016 . Italian Law n°163 therefore provides that “where unitary effect is requested for a European patent and the request is revoked or withdrawn, the term for filing an Italian translation with the Italian Patent and Trademark Office will run from the date of receipt of the communication of the final revocation or refusal of unitary effect, or from the date of receipt by the European office of the withdrawal request“. On 4th December 2017, a law allowed for Italy’s ratification of the UPC Protocol on Privileges and Immunities.

Key step in Latvia:

Latvia deposited its instrument of ratification of the UPC Agreement on 11th January 2018. It become thereby the first participating country to ratify the UPC Agreement in 2018.

Key step in Luxembourg:

Luxembourg is preparing the ratification of the UPC Agreement. The Luxembourg’s Council of State gave its consent for the bill ratifying the UPC Protocol on Privileges and Immunities in February 2018. The law was published in Luxembourg official journal and will come into force on 18th March 2018. It is especially important for Luxembourg to ratify this Protocol. Indeed, its ratification -as well as those of France, the UK and Germany- is necessary for the Protocol to come into force.

16 November 201715 November 2017

Starting proceedings before the UPC

What should the plaintiff lodge to start proceedings?

Depending on the type of action to be started, the plaintiff shall lodge either:

a Statement of claim;
a Statement for revocation;
a Statement for a declaration of non-infringement;
an Application for appropriate compensation under Article 8.1 of Regulation 1257/2012;
an Application to annul or alter a decision of the European Patent Office;
an Application for obtaining provisional and protective measures and injunctions.

Where should the plaintiff lodge her statement/application?

For First Instance proceedings:

A plaintiff shall lodge her Statement or Application at a sub-registry of the UPC’s Registry. Sub-registries will be set up in all local or regional divisions as well as in central divisions.

The plaintiff may under Article 33 of the UPC Agreement, choose between several divisions . The UPC Agreement in fact provides for the plaintiff to lodge her application either before the local division where the actual or threatened infringement has occurred or the local division where the defendant has its place of residence or place of business. The plaintiff must in any way lodge its application in accordance with the competence of the divisions.

For Appeal proceedings:

Appellants must lodge an Application for leave to appeal against an order of the Court of First Instance .

Appellants must lodge a Statement of appeal to appeal against a decision of the UPC’s Court of First Instance

Appellants must lodge both at the UPC’s Registry located in Luxembourg.

How should the plaintiff lodge the statement/application?

An electronic filing system will be set up to enable plaintiffs to lodge the Statement or Application electronically at the UPC’s Registry.

This electronic filing will be available for First Instance and Appeal level.

16 November 20176 September 2019

What will the UPC be competent for?

What will be the competence of the UPC?

As a general rule: The UPC will have exclusive competence in respect of civil litigation on matters relating to European patents and Unitary Patents. The UPC will consequently also have exclusive competence on Supplementary Protection Certificates issued for a product covered by a European patent and a Unitary Patent.

More specifically: The Court will be exclusively competent for actual or threatened infringements and related defences, and actions for declaration of non-infringement. The UPC will also be competent for actions for provisional and protective measures, injunctions, actions for revocation and counterclaims for revocation.

However, during at least 7 years after the entry into force of the UPC Agreement, national courts will share jurisdiction with the UPC over actions for infringement and revocation of the national part of a European patent. These 7 years correspond to the transitional period.

What about the Court of Justice of the European Union?

The UPC will have the same obligation as any national court to request preliminary rulings from the Court of Justice of the European Union.

In fact, the UPC is a court common to EU Contracting Member States and as such, it must follow, apply and ensure the uniform interpretation of European Union law.

However, national courts will remain competent for actions that do not come within the exclusive competence of the UPC. The UPC will thus be incompetent with regard to national patents or supplementary protection certificates granted for a national patent.

What will be its relationship with the EPO?

The UPC will have exclusive competence to annul or alter the decisions of the EPO (Article 32 UPC Agreement) if the EPO misuses its power or infringes:

Regulation (EU) N° 1257/2012;
Regulation (EU) N°1260/2012;
Any of the implementing rule of the EPO “for carrying out the administrative tasks referred to in article 9(1) of Regulation (EU) N°1257/2012;
An essential procedural requirement.

Nonetheless, oppositions at the EPO will still be possible. The parties however must first inform the UPC of any pending revocation, limitation or opposition proceedings before the EPO. The Court may then:

stay its proceedings when a rapid decision may be expected from the EPO.
request that opposition proceedings before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office, (Rule 298 of the Rules of Procedure of the UPC)

16 November 201722 March 2018

The structure of the Unified Patent Court in 3 points

(1) How will the UPC be structured?

The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of Justice of the European Union will hear questions on referral and preliminary rulings on European Union law.

The Court of First Instance will be composed of a central division and several local and regional divisions across the Contracting Member States.

The Court of Appeal will have only one division and, together with the Registry, will be located in Luxembourg.

(2) Where will the Central Division be?

The central division will be divided between three seats: Paris, London and Munich.

London	Paris	Munich
Human necessities	President's Office	Mechanical engineering
Chemistry	Performing operations and Transporting	Lighting
Metallurgy	Textiles and Paper	Heating
	Fixed constructions	Weapons
	Physics	Blasting
	Electricity

(3) Where will the Local and Regional Divisions be?

The local divisions will be located in Paris, Munich, Mannheim, Dusseldorf, Hamburg, Milan.

One regional division is announced in Stockholm and will bring together the Baltic states with Sweden.

This list is not exhaustive and more local and regional divisions may be confirmed in the coming months.

Summary Diagram:

For the exact locations see our post on the subject.

16 November 20176 September 2019

Four key points to understand the Unified Patent Court

(1) Which courts currently have jurisdiction over European patents?

Currently, national courts of the contracting states of the European Patent Convention (EPC) are competent to decide on the infringement and validity of the national part of European patents.

This gives rise to a number of difficulties when a patent proprietor wishes to enforce a European patent, or when a third-party seeks the revocation of a European patent, in several countries.

Patent proprietors indeed risk facing diverging decisions between the different national courts of the EPC contracting states. Patent proprietors also face high costs and legal uncertainty over the fate of their patents.

At present, forum shopping is inevitable. Parties in fact seek to take advantage of differences in the national courts’ interpretation of harmonised European patent law, the level of damages awarded, the national procedural laws, and litigation pace.

(2) What is the Unified Patent Court?

The Unified Patent Court Agreement (UPC Agreement) will create a specialised patent court, the Unified Patent Court (UPC).

The Unified Patent Court will have exclusive competence over European patents and European patents with unitary effect. The territorial jurisdiction of the UPC will extend to the 25 participating Member States (every European Union Member States besides Spain, Croatia and Poland).

This means that the rulings of the court will be simultaneously valid in all participating Member States.

The UPC will thus create a uniform and foreseeable patent environment within the European Union.

(3) Which legal instruments created the UPC?

Two Europeans regulations created the UPC:

Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.
Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

These two regulations will apply from the entry into force of the UPC Agreement.

(4) How much will users of the court need to pay for each action before the UPC?

To learn about the different court fees see our detailed review.

16 November 201722 March 2018

The key dates of the UPC’s timetable: from the entry into force of the UPC Agreement to transitional period

The entry into force of the UPC package follows a complex timetable. The UPC goes in fact through 3 phases and periods before its start of operations.

When will UPC Agreement enter into force?

The UPC Agreement will enter into force on the 1st day of the 4th month after the deposit of the 13th instrument of ratification. The instruments of ratification must include Germany, France and the United Kingdom.

Germany, France and the United Kingdom’s ratification are indeed a prerequisite to the UPC Agreement entry onto force. This is because they were the 3 Contracting Member States in which the highest number of European patents had effect in 2012.

At the end of October 2017, 14 countries had ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, and Sweden. Germany and the UK are currently in the process of ratifying the UPC Agreement.

The Preparatory Committee is thus working under the assumption that the Court will become operational in the first quarter of 2018.

What are the Provisional Application Phase and the Sunrise Period?

The Provisional Application Phase will start when 13 Member States that have already signed the UPC Agreement and whose Governments have received Parliamentary approval to ratify the UPC Agreement, approve the Protocol to the Agreement on a Unified Patent Court.

It will allow for some parts of the UPC Agreement to be applied early. The UPC Committees will be able to take final decisions on the practical set up of the Court. They will -for example- be able to finalise the recruitment of judges and the testing of the IT.

The Provisional Application Phase is scheduled to last for 6 months. The last 3 months, also known as the Sunrise Period, will specifically allow European patent proprietors to start opting out. The opt-out is the procedure by which proprietors or applicants for a European patent can withdraw their patents from the exclusive competence of the Unified Patent Court (See the Opt-out: Essential Guide)

Currently, the Preparatory Committee chairman considers that the Provisional Application Phase should start in autumn 2017. The Sunrise Period could then follow at the beginning of 2018.

What is the transitional period?

The transitional period will last 7 years starting after the entry into force of the UPC Agreement. The UPC Administrative Committee may renew it for a further 7 year. The transitional period is likely to start in the second quarter of 2018. It will then last up to the second quarter of 2025.

During this period the UPC will share jurisdiction with national courts over actions for infringement and revocation of a European patent. Hence, any holder of or applicant for a European patent will be able to initiate actions before national courts. This will be regardless of whether the European patent or application concerned will have been the subject of an opt-out.

Patent holders will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. The UPC will have exclusive jurisdiction over Unitary Patents.

If the transitional period is not renewed, the UPC will have perpetual exclusive jurisdiction over Unitary Patents and European patents. Opted out European patents will not come back under the UPC exclusive competence once the transitional period is over.