An independent blog written by highly experienced Intellectual Property Lawyers providing a comprehensive overview of the Unitary Patent and the Unified Patent Court and discusses the latest news on the topic.
The UPC’s primary sources are various, and it can be quite difficult at times to locate them. The UPC Blog by LAVOIX has therefore created a new category in its blog that indexes the main pieces of legislation and documents relevant to the UPC.
You will notably find:
Portugal deposited its instruments of ratification for the UPC Agreement on Friday 28/08/15, as indicated on the European Council website.
According to the IP Copy, Portugal had passed the presidential decree ratifying the UPC Agreement on 06/08/15, but had not deposited its instrument of ratification at the Council of Europe before last week.
It has now become the eight country to have ratified the UPC Agreement. The UPCA will however only enter into force after Germany, the UK, and three more countries ratify it, following the ratification rule which states that:
The UK government announced on 11th August that the location of the London Central Division and the UK Local Division of the UPC had been chosen and that a lease had been signed for 8th floor of the Aldgate Tower. The Intellectual Property Office Minister, Baroness Neville-Rolfe published the following statement about these new premises:
“The signing of this lease represents a milestone in the UK’s preparations for the introduction of the Unified Patent Court. Aldgate Tower, with its superb central location, will provide an ideal home for a modern court to support the UK’s and Europe’s leading edge innovative companies. This will further strengthen UK’s legal and professional services sector, and reinforce London’s status as a world leading centre for dispute resolution.”
After rumours that the UPC might be located in Holborn or near Heathrow it seems that the IPO preferred a building in East London, conveniently located in zone 2, and easily accessible. In fact, 5 underground lines, the DLR, London Overground and 3 major rail stations are all within walking distance of the Aldgate Tower. Two Crossrail stations are also underway at nearby Liverpool Street and Whitechapel.
The full planning application (necessary to change the use of Aldgate Tower’s 8th floor from office use only to a mix of offices and courtrooms) can be found here. It contains notably the proposed floor plan of the UPC, which should be organized around four courtrooms and 14 meeting rooms/office spaces. The IPO’s covering letter to Tower Hamlet also indicates that the installation of the UPC will be followed by the creation of 10 permanent jobs by the IPO.
On 23rd June was organised in London by the IPO and CIPA an event on the consultation launched in May by the Preparatory Committee on Court fees and recoverable costs. The consultation focuses primarily on Court fee structure, SMEs support, Opt-out and Recoverable costs. This event aimed at raising issues relevant to the consultation and encouraging responses from the general public.
You can see our post on the consultation here. The consultation documents can be found here. You can participate to the consultation by clicking here. The link to the video of the IPO and CIFA event can be found here.
The UPC Blog participated to the webinar and has summarised for you the Background of the consultation, The Issues at stake in the consultation document and the Discussion that followed between the participants.
I. The background of the consultation:
The background was presented by Janis Makarewich-Hall (Head of UPC Taskforce at the IPO) who insisted that the court fees consultation document does not represent “a done deal”. The contents of this document could in fact evolve following the results of the consultation.
Janis Makarewich-Hall explained that the propositions listed in the consultation document had first been circulated to all participating member states but that the responsibility for the fee structure was split between two committees: the legal and finance committees.
Part of the finance committee’s work is to calculate the court fees so that the court is self-sustaining by the end of the transitional period, this consequently entails a regular review of the fee structure. The structure however follows completely new rules specific to the Unified Patent Court and unrelated to national norms that were considered inappropriate.
II. What are the main points of the consultation?
Counter claim for revocation: The main issue at stake is whether a value-based fee (or high fee) is established or whether a low fixed fee is a better choice. The UK wanted a low fixed fee as it fears that a value-based fee could be seen as an impairment to the defence. The compromise that was suggested by the expert panel was to have both fees combined.
SMEs : The second issue that is addressed by the consultation is the impact of the court fee structure on SMEs. In order to avoid adopting a fee structure that would be detrimental to SME a few options were considered. Some states wanted to focus and promote behaviours favoured by SMEs, such as early settlement. Others wanted more direct support with either reductions of fees or no value based fees. The consultation documents includes these two options and the public is invited to comment on what they think more suited to SMEs.
Recoverable costs: The maximum ceiling of 3 millions for recoverable costs has been controversial and some states have expressed their concerns considering that it is too high and therefore should be reduced.
Opt-out fee: Most member states felt that 100 euros would have been fair (after taking into consideration the administrative costs of the Opt-out procedure) based on an EPO estimate. A compromise of 80 euros was however agreed.
The consultation is opened until 31st July. All the responses will then be sent to the Preparatory Committee, which will take the final decision in its December and February meetings.
III. Discussion of the key points:
In the second part of the event the participants were invited to critically assess the propositions submitted in the consultation document.
Court structure fees (Kevin Mooney, Simmons & Simmons):
Under Article 36, during the transitional period, the UPC is financed by litigants and its budget is balanced by member states’ contributions. However it is important to note that the budget of the court has not yet been published; it is thus impossible for users to know the financial assumptions underlying the level of court fees which justify the current fee structure.
The fees are fixed by the Administrative committee, and will evolve in line with the needs of the court. The fees are at the moment divided between fixed fees and value based fees. It is however not yet known when the value based fee will apply. Under article 370 there are 7 fixed fees with an additional value based fee, and 18 fixed fee only actions. The fixed fees start at 80 euros for the opt-out and go up to 20,000 euros for the revocation. Value-based fees will cost up to 220,000 euros for the most valuable cases (more than 30 millions). The guidelines that will determine the method of assessment of the value-based fee have not been published yet but it appears that the case will be valued on a notional royalty for the period of the alleged infringement. Moreover, the valuation should relate to the whole action.
One issue highlighted by Kevin Mooney is the fact that under Article 70, value-based fees should be paid in advance which reveals a problem of timing as the value might not be known from the start. Targeted support measures for small and medium-sized enterprises and micro entities may be considered. However the word “may” highlights the fact that it is not compulsory.
Kevin Mooney suggested moreover to consider the following questions when responding:
Fee structure and SMEs (Justice Birss):
The consultation proposes three alternatives for the fee structure concerning the SMEs:
Justice Birss further highlighted two more systems that could benefit SMEs :
Opt out (Richard Vary, Nokia):
As Richard Vary explained, a fee for opting-out and opting back in will apply to deter companies opting all or most of their patents in fear of the new court. The fee will be 80 euros for opt-out fees.
The opt-out fee however raises questions. Applicants will in fact be charged for a system they do not want to use and will therefore subsidise a system that they decided to leave. The direct financial consequence of that will be that the more people opt-out, the more money the court receives but the less work it has to do.
Richard Vary also suggested that there should be a reduced opt-out fee for patentees who want to opt-out more than one patent, as he believes the administrative costs is unlikely to increase when dealing with patents that all belong to the same patentee.
Recoverable costs (Alan Johnson, Bristows):
It is important to note first that recoverable costs under article 69(1) include legal representation, court fees, and costs incurred in court. However it appears that the table of recoverable costs caps that is submitted in the consultation document only relates to the legal representation; court fees would thus be recoverable on top of this.
Another issue arises with recoverable cost caps, which should apply per action. However if a patentee brings a case for infringement and validity, should it be considered as one or two actions ?
The assessment of the value is also a problem as it is unclear whether the “value of action” is to be necessary the same as that assessed for the value based-fee. The following problem may occur: if patentees assess a large value for theirs patents they can therefore recover a large amount of costs, if defendants on the contrary, only see this action as being of a small value they would therefore only recover small costs. So Alan Johnson argues that there is a risk that “recovery is determined by who starts the action”.
In case of multiple defendants there is also a question of whether it is possible for the applicant to recover multiple costs from multiple defendants. Is the payment shared between all the defendants? On the contrary if the defendants win do they all get their costs?
The problem of VAT is also a further point to consider when responding to the consultation as whether the value of action includes VAT, or what would happen if one party is registered for VAT while another is not, are not addressed in the consultation document.
The consultation closes on 31st July and as the panel explained there is no particular structure to the consultation as far as the responses are concerned. However, it was also noted that comments along the four topics discussed (counterclaims for revocation, SMEs, the opt-out and recoverable costs) might be a good place to start…
The Select Committee endorsed today the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The EPO reports that this proposal was adopted by the EU member states participating with the required 3/4 majority.
The True Top 4 proposal corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries (Germany, France, UK and the Netherlands), and contains a clause for possible revision after four years. Special consideration is also given to the situation of SMEs.
The True Top 4 proposal is divided as follow:
| 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 |
This proposal was preferred to the True Top 5 for which the renewal fees matched the five most frequently validated countries (Germany, France, UK, Netherlands and Sweden) and foresaw a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions. Under Top 4 proposal the patentee will have to pay a total of EUR 35, 555, whereas under Top 5 the patentee would have faced an overall cost of EUR 41, 955 and EUR 40, 403 for respectively the normal and reduced levels.
Putting aside the fear that these fees are still too high for SMEs, it is good news to have a definite idea of renewal fees for the Unitary Patent as it should enable us all to anticipate better when Unitary Patents are the most relevant to patentees.
You can see our previous posts about the different proposals made by the EPO on renewal fees here (May 2015) and here (March 2015).
Has Spain changed its mind about the Unitary patent package since its actions were dismissed by the CJEU? According to the Confederation of Employers and Industries of Spain, it has not and the Spanish industry is much better off outside the system…
A few weeks after Spain’s actions were dismissed by the ECJ, the Kluwer Patent Blog publishes an interview of the Confederation of Employers and Industries of Spain (CEOE), in which the Confederation explains why they strongly support Spain’s government’s opposition to the Unified Patent Court and the Unitary Patent and why they wish to remain out of the UPC Agreement.
It appears unambiguously that the CEOE believes that “the UPC Agreement will not be beneficial to most EU entreprises and will be very detrimental to SMEs” justifying therefore CEOE’s strong opposition to the Unitary Patent package.
The CEOE’s main concern in that respect is the language regime adopted by the UPCA , namely the fact that the unitary patent will have to be filled in English, French or German. For the CEOE “this gives a competitive advantage to enterprises which use one of these languages, to the detriment of enterprises of other Member States.” An example for the CEOE of the unsuitability of the trilingual language regime is the EPO which it considers to be “inefficient and expensive“.
The CEOE further justifies Spain’s position towards the UPC Agreement by arguing that Spanish companies will be able to enjoy all the benefits of the UPCA without the inconvenient as they “will not be obliged to respect in Spain Unitary Patents which have been granted without a Spanish translation with legal effects. Nor will Spanish companies be exposed to lawsuits over products and activities developed in Spain, before a Unified Patent Court in a foreign country and in a foreign language.” The CEOE finally insists that the UPCA, and in particular the court fees, have not been designed with SMEs in mind. The CEOE argues notably that “only big companies will be able to litigate. If SMEs are sued for infringement, they will have to give up, even if the patent of the plaintiff is invalid“.
It appears therefore that there is still a very strong opposition to the Unitary Patent package in Spain and that as a consequence Spain will not in the near future be part of the UPC Agreement.
Managing Intellectual Property launched on 18th June a new survey for in-house counsel to assess the evolution of concerns and views about the UPC. This survey is part of a bigger initiative by Managing IP which already organised a first survey at the beginning of 2015 and which will organise a third one before the end of the year.
The first survey on the Unitary Patent and Unified Patent Court showed “broad support fo the new system, with the majority of respondents saying that they will use (the Unitary Patent and the Unified Patent Court) and 46% saying that it will be good innovation for Europe”.
This second survey now comprises 6 short questions which are designed around two themes. First, it assesses “how the attitudes to the new system have change” and what specific concerns about the UPC in-house counsels have. It then features questions about the Unitary Patent fees and the Unified Patent Court fees.
If you wish to participate you can find the link here.
The Preparatory Committee published an update on Article 83 of the UPCA and the possibility of opting out. As a reminder, Article 83 states that:
“(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.
(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.
(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.
(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.
(5) Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a broad consultation with the users of the patent system and a survey on the number of European patents and supplementary protection certificates issued for products protected by European patents with respect to which actions for infringement or for revocation or declaration of invalidity are still brought before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to prolong the transitional period by up to seven years.”
The Q&A of the Unified Patent Court’s website clarifies the provisions contained in article 83(1) and 83(3), and looks at whether Article 83 affects the exclusivity of the UPC’s jurisdiction and the duration of an opt-out.
What does the Preparatory Committee say about Article 83 and the exclusivity of jurisdiction?
The issue was whether Article 83 only concerned the exclusive jurisdiction of the UPC with the consequence that after the opt out the UPC would share its competence with national courts, or whether Article 83 should be read as totally removing the UPC’s competence once the patent was opted-out.
The Preparatory Committee makes clear that the intention of the legislator is that Article 83 gives the opportunity to patentees to remove their patents entirely from the jurisdiction of the UPC. Therefore once the patent has been opted out, the parties only choice of forum will be national courts.
And what about the duration of the opt-out?
This was the second main issue about opt-outs. In fact with the present drafting of Article 83 (1) it is difficult to know whether the opt-out from the jurisdiction of the UPC for a classic European patent is only effective during the transitional period or whether, once it has been notified during the transitional period, it is effective for the whole life of the patent.
The Preparatory Committee states in unequivocal terms in the Q&A that the opt-out is valid for the whole life of the patent rather than just for the transitional period. Therefore the transitional period only corresponds to a period of time during which patentees have the possibility to either bring their actions for infringement or revocation before national courts, or decide to opt-out of the UPC so that their patents are only under the jurisdiction of national courts. The transitional period consequently does not impact the length of the opt-out but determines when the opt-out can take place, i.e. within the seven years (more if prolonged) set out by the UPCA.
See our post on the Transitional period and the Opt-out here.
WIPR published on its blog last week an update about the UK’s ratification of the UPCA, as it appears that it might only take place after the referendum on the country’s EU membership.
The European Union Referendum Bill was passed by the House of Commons on 9th June and if passed by the House of Lords, the referendum will be held before the end of 2017. The WIPR however notes that the UPCA ratification by the UK is unlikely to happen before the EU referendum, which means that the UK’s ratification might be postponed to the very end of 2017 or beginning of 2018. This late ratification will of course have a direct impact on the entry into force of the UPC as it requires the ratification of ten countries plus the ratification of France, Germany and the UK for the court to come into existence. The 2016 ambitious entry into force of the UPCA is thus very likely to be once again postponed.
If the UK were to leave the EU this would however not mean the end of the UPC. In fact, article 89 of the UPCA states that:
“This Agreement shall enter into force … on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place …”
A“Member State” is in turn defined in Article 2(b) as “a Member State of the European Union”. Therefore if the UK decides that it does not want to take part anymore in the European Union, the Netherlands would become the third mandatory ratification country, as it is the country with the highest number of European patents after the UK.
If the end of the UK’s membership in the European Union does not mean the end of the Unified Patent Court Agreement, it would however have other practical consequences. In fact the UK is in in charge of various responsibilities within the UPC preparatory committee and notably the IT system. This major part of the UPC would thus need to be allocated to a country which has the capacity to put together an IT system within a short period of time. Another issue is the fact that one of the central division will be located in London. It would not make sense for the UK to host one entity of the central division if it does not ratify the UPCA and takes part in the Unified Patent Court. Article 7(2) of the UPCA however states that “The central division shall have its seat in Paris, with sections in London and Munich …” and Annex II to the Agreement specifies the functions of the London branch. An amendment of the UPCA would therefore be necessary in order to relocate the London central division. This amendment could of course be quite complicated to set up and might necessitate the countries who have already ratified the UPCA to ratify this amendment too.
Finally it must be noted that the most obvious consequence of the UK exiting the EU is the fact that the scope of protection offered by the unitary patent will not include the UK, and will therefore be narrower than it is now. The question is therefore whether this will make the unitary patent less attractive for patentees.
The issue of the UK’s referendum on its participation to the European Union will thus have direct consequences for the UPC, whether the UK stays within the EU or leaves the Union, and the UPC Blog by LAVOIX is keen to know what you think about this new development.
The EPO published at the beginning of May two new proposals for an adjusted level of renewal fees for the European Patent with Unitary Effect, which were examined at the 14th meeting of the Select Committee of EU Participating Member States in the enhanced cooperation on Unitary Patent Protection. (See our post on the EPO’s first draft of the renewal fees here)
The EPO describes these two proposals in the following terms:
“These proposals foresee fee levels of respectively the equivalent of the renewal fees which have to be paid for the four or five countries out of the twenty-five EU participating member states in which most European patents are currently validated (a “true” TOP 4 and a “true” TOP 5- in contrast to the previous approach, the EPO’s internal renewal fees are no longer taken into account). The “true” TOP 5 proposal in addition foresees a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions. Member States held an exchange of views with some Member States not yet able to take a concrete position on these proposals.”
The question is therefore how do these new proposals differ from the first draft of renewal fees presented in March 2015 by the EPO. The first proposal had been criticized and judged inadequate for the ambitions of the Unitary Patent. The level of renewal fees for the first ten years of the unitary patent had in fact been established by reference to the EPO’s internal renewal fees payable to the EPO before grant while the application is pending, rather than by reference to the renewal fees payable to national patent offices for a similar patent. Renewal fees only matched the fees payable for 4 (TOP 4: Germany, France, Great Britain, and the Netherlands) or 5 (TOP 5: Germany, France, Great Britain, the Netherlands and Sweden) top validation countries for European Patents after year 10.
The new proposals took into consideration these criticisms, and national renewal fees for Top 4 and Top 5 thus now form the basis of the proposed Unitary Patent renewal fees from years 2 to 20. This created reduce fee levels for patent years 2 to 9. In addition, in the true TOP 5, the 25% SME reduction in years 2 to 10 and the 15% licenses of right reduction remain.
So what are the new adjusted fees? (See SC/18/15)
For Top 4 level, over 20 years the sum total of the fees would be EUR 35, 555 divided as follow:
2nd year: 35 EUR
3rd year: 105 EUR
4th year: 145EUR
5th year: 315 EUR
6th year: 475 EUR
7th year: 630 EUR
8th year: 815 EUR
9th year: 990EUR
10th year: 1, 175 EUR
11th year: 1, 560 EUR
12th year: 1, 775 EUR
13th year: 2, 105 EUR
14th year: 2, 455 EUR
15th year: 2, 830 EUR
16th year: 3, 240 EUR
17th year: 3, 640 EUR
18th year: 4, 055 EUR
19th year: 4, 455 EUR
20th year: 4, 855 EUR
This is to be contrasted with the total of 37,995 EUR, which means that under the adjusted fees the patent owner would save 2,440 EUR. (See our post on the first version of Court fees here)
For Top 5 level, over 20 years the sum total of the fees would be 41, 955 EUR and 40, 403 EUR for the normal and reduced levels. The Reduced fees correspond to a 25% reduction from years 2 to 10 for SMEs, natural persons, NGOs, Universities and public research organisations. The fees would be divided as follows (the amounts after the 25% reduction for SMEs and other entities are shown in brackets, in italics):
2nd year: 85 EUR (63.75 EUR)
3rd year: 165 EUR (123.75 EUR)
4th year: 255 EUR (191.25 EUR)
5th year: 455 EUR (341.25 EUR)
6th year: 645 EUR (483.75 EUR)
7th year: 825 EUR (618.75 EUR)
8th year: 1 050 EUR (787.50 EUR)
9th year: 1 255 EUR (941.25 EUR)
10th year: 1 475 EUR (1 106.25 EUR)
11th year: 1 790 EUR
12th year: 2 140 EUR
13th year: 2 510 EUR
14th year: 2 895 EUR
15th year: 3 300 EUR
16th year: 3 740 EUR
17th year: 4 175 EUR
18th year: 4 630 EUR
19th year: 5 065 EUR
20th year: 5 500 EUR
Therefore a patent owner would save 1,670 EUR (or 1, 252 EUR for the reduced fees) compared to the first version of the court fees established by the EPO.
The EPO also published a second document (SC/19/15) comparing the fees and external costs of a European Patent validated in 1 to 25 countries and a Unitary Patent (based on the adjusted fees). This document shows that the Unitary Patent is only financially interesting for patentees who wish to register their patent in more than 3 countries for TOP 4 and 4 countries for TOP 5.
Paradoxically however 64% of European Patents are only validated for a maximum of 3 countries, while only 0.4% of European Patents are validated for 25 countries. It is nonetheless impossible to know from these figures whether the overall cost of the Unitary Patent will encourage patentees to choose the Unitary Patent above the European Patent or whether there is a genuine majority of patents, which only require a validation in 3 or less countries.
These adjusted fees have already been criticised by the American Intellectual Property Law Association and the EUROCHAMBRES. The AIPLA in fact wrote to the EPO to express concerns about the adjusted fees that it considers to be still to high in comparison with costs in the Americas and in Asia. AIPLA argues for example that “the current TOP 4 proposal would cost at least 3 times more over the life of a Unitary Patent than renewals of a U.S patent, an the UP will not cover all EPO countries or even all EU states.”
The Euro Chambres of Commerce and Industry notes that the fee for the “True TOP 5 with reduced fees” only equals a 4% reduction from the first draft of the Unitary Patent Court fees. These adjustments therefore do not represent a real economy for the SME that the EUROCHAMBRES represent, especially compared to the U.S where a 50% reduced fee is applied at renewal. The EUROCHAMBRES president Arnaldo Abruzzini defends the idea –shared by others, see notably this post– that the renewal fees are set up in accordance with the needs of the national patent offices in mind rather than in accordance with the principles of competitiveness and attractiveness., and therefore at the detriment of businesses.
Finally, as highlighted by the IPKat, when looking at the distribution of the reductions of the renewal fees, it can be noted that these reductions apply disproportionately to the early years of the patent. This means that these reductions benefit in particular industries with short product lifecycles where patents are less likely to be maintained after the first ten years.
It is now to the Select Committee to decide the exact level of renewal fees which will apply and the UPC Blog by LAVOIX will keep a close eye on this topic.