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 Select and Preparatory Committees have published recently on the UPC website an explanatory note entitled “An Enhanced European Patent System” which aims at concisely presenting the UPC and UP to the public.
The UPC Blob will soon publish a post summarizing the main points of this note.
Last week, the European Parliament voted to complete the legal framework for the Unified Patent Court and the Unitary Patent (IP/13/750) (523 votes for, 98 against and 7 abstentions), updating EU rules on the jurisdiction of courts and recognition of judgments. In July 2013 the European Commission had in fact proposed an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement.
It is now for the Council of Ministers to formally adopt this text in order to become law. This is expected to happen at the Council meeting in June.
The training centre for judges who will work at the Unified Patent Court (UPC) has opened in Budapest. Launched March 13th, the centre will be based in government offices in the Hungarian capital.
The opening coincided with a two-day conference to discuss the centre, along with the unitary patent and UPC more generally. Zoltán Cséfalvay, minister of state of Hungary’s Ministry for National Economy, said EU member states participating in the unitary patent system had “unanimously” decided that judges should be trained in Budapest. Benoît Battistelli, President of the European Patent Office (EPO), in his address welcomed ” another step forward in putting in place a unified patent litigation system for the benefit of inventors and industry in Europe”. Paul van Beukering, Chairman of the UPC Preparatory Committee, on the other hand highlighted the crucial role of the UPC trained judges: “If we want the Unified Patent Court to be amongst the best patent courts in the world, we need the best judges we can get. They are the most important asset of the court. To achieve that, training is essential.”
A list of prospective judges has been drawn up, but none has been selected yet.
The Unified Patent Court website has published pictures of the training centre.
Ministers in the Council of the European Union have at the beginning of March (on March 4th) endorsed the compromise agreement on the European Commission’s proposal to complete the legal framework for Europe-wide patent protection, updating existing EU rules on the jurisdiction of courts and recognition of judgments (IP/13/750). It is the last missing part for the establishment of a Europe-wide patent protection. It is part of a package of measures recently agreed to ensure unitary patent protection in the Single Market (IP/11/470).
“By making changes to the rules on recognition of judgements, we are taking a further step on the way to the new Unified Patent Court beginning its work,” said Vice-President Viviane Reding, EU Justice Commissioner and Internal market and Services Commissioner Michel Barnier on March 4th “Today’s endorsement by Ministers confirms the commitment by Member States to set up the Unified Patent Court as quickly as possible and make unitary patent protection in the EU a reality. It is of crucial importance for Europe’s competitiveness and growth that our businesses and innovators benefit from patent protection at a lower cost.”
After Ministers reached a general approach at the December Justice Council (MEMO/13/1109), the European Parliament now needs to vote on its report in plenary, which is expected at the latest in April 2014. The Commission is also encouraging Member States to ratify the Unitary Patent Court Agreement as quickly as possible, and to complete the preparatory work required for the Court to become operational accordingly, so that the first unitary patents can be granted in the shortest possible timeframe.
The Agreement relies upon the “Brussels I Regulation” (Regulation 1215/2012) to determine international jurisdiction of the Unified Patent Court. The Commission has therefore proposed On July 26th 2013 an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement. This amendment has not however yet been passed by the European Commission.
In an open letter published February 25th 2014 addressed to the Unified Patent Court, a coalition of companies and trade associations including Apple, Google, Microsoft and Samsung, repeated concerns raised last September regarding the rules of procedure of the UPC. See our post in the previous letter here.
This recent letter did not raise new concerns but insisted on the need for rules on judicial guidance, bifurcation and injunctions, in order to prevent patent trolls to abuse the new court. This consortium of companies argues that rules enabling courts to decide invalidity and infringement separately could mean that invalid patents will be held to be infringed. They also believe that judges may be persuaded to grant broad injunctions on valid patents, and fear that the probability of the UPC being flooded by Patent trolls will be increased by legal uncertainty deriving from an absence of appropriate rules on bifurcation and injunctions for judges. However as “Managing IP” suggests “judges may be less keen to bifurcate cases than many companies fear (…) partly because they would be reluctant to see part of the case off to another court in a different country, possibly conducted in another language.” (Managing IP 26/02/2014)
The sixteenth draft of the rules of procedure released on March 06th 2014 however does not bring any change related to bifurcation or injunction thus indicating that the UPC followed the Rules Committee’s position against being prescriptive and does not consider this issue to be a problem.
The Legal Group of the Preparatory Committee, chaired by Germany’s Johannes Karcher, will now consider the draft set of rules at the level of participating EU member states. It plans to hold a hearing later this year on the suggested amendments to the text. The hearing is expected to be in September or October. (Managing IP 07/03/2014)
Now that the final draft of the rules of procedure has been released do you think that they will allow an easy access to the UPC by Patent Trolls? Do you share the Apple, Blackberry or Google’s point of view? Or are you confident that the UPC has taken so far the necessary measures to protect itself against what cost the US economy $500 billion over the last 20 years according to Corporate Counsel?
You can find the latest draft of the Rules of Procedure (18th) here .
The UPC Blog has looked in previous posts at the UPC competence and its sources of law, in this post we want to look specifically into infringement and the changes that the UPC will bring for IP professionals when considering bringing an action for infringement. Hence, the question that the UPC Blog would like to address in this post is simple: “How is the creation of a new unified patent jurisdiction going to impact infringement actions?”
This question is of course very limited in its approach and the UPC Blog would like to invite its readers to submit new questions on this topic, whether linked to their professional practice or on a more academic level. It is also important for our readers to note that the last draft of the rules of procedures being still under review by the Preparatory Committee, this post might be modified and updated in consequence.
We will look first at the definitions of infringement in the European Patent Convention (EPC) and in the Unified Patent Court Agreement (UPCA), and the differences between the two. Then we will limit our observations to the issue of the statute of limitation for an infringement action as it is now and how it will change with the UPCA.
The European Patent Convention looks at infringement actions at article 64 EPC. It starts by defining the rights conferred by a European Patent at 64(1) and (2): “(1) A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. (2) If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.” And follows by stating at 64 (3) that “any infringement of a European patent shall be dealt with by national law.” Infringement acts are thus defined at national level: their definition, the way national courts qualify acts of infringement, the statute of limitation, etc.. may therefore vary between Contracting States.
Under the UPCA, infringement acts are defined in articles 25 and 26, which give patent holders the right to prevent direct and indirect use of their patent. This definition of infringement as opposed to the EPC will be common to all countries ratifying the UPCA. Hence, under the UPCA a patent is infringed when a third party without the proprietor’s consent “makes, offers, places on the market or uses a product which is the subject-matter of the patent, or imports or stores the product for those purposes; uses a process which is the subject-matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect; offers, places on the market, uses, or imports or stores for those purposes a product obtained directly by a process which is the subject-matter of the patent (art 25 UPCA)”
Moreover, under article 32 UPCA, the UPC will have exclusive competence for “actions for actual or threatened infringements of patents and supplementary protection certificates (…) and for actions for declarations of non-infringement of patents and supplementary protection certificates”.
Hence, after the entry into force of the UPCA -officially planned for early 2016- the European Patents and the European patents with unitary effect will both be included in the UPCA’s definition of “patent” (at article 2). Accordingly, any action brought against the alleged infringer of a “non opted-out European Patent” and of a European patent with unitary effect will be decided by the UPC applying the definition of the infringement act of the UPCA.
This is precisely what the UPCA aims to achieve: a unified and homogenous European arena for patent infringement actions.
It is not to say of course that the EPC will lose any of its importance. On the contrary it will still be very much relevant. In fact some patent holders might want to opt-out from the UPC and stay under national jurisdictions for the whole of their patent’s lifetime or until they decide to withdraw their opt-out as provided by article 83 UPCA. In these circumstances, the EPC will carry the same weight as it has now, before the entry into force of the UPCA. Furthermore, under article 24 UPCA, the EPC is recognized as a source of law of the UPCA and as such will be relied upon by UPC judges.
But what about the time limits within which claims for patent infringement can be brought?
Under the EPC, statute limitations are determined by national law. For example in Austria infringement claims must be brought within three years from the date the right holder obtains knowledge of both the infringement and the identity of the infringer, whereas in Belgium the time limit is five years. A three-year time limit is nonetheless considered to be the general time limitation, and will be common for most countries. In some countries however, like in France, the date at which the patent holder obtains knowledge of the infringement act is irrelevant (France has just extended to 5 years its 3 year-time limitation in a law adopted by the French National Assembly in February 2014).
The UPC however sets up a different time limit under article 72 UPCA which states: “(…) actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action.” This will of course bring considerable change to professionals whishing to initiate infringement actions by increasing how far back infringement claims can be investigated and thus potentially increasing the number of actions for infringement.
The UPCA -nor the draft rules of procedure- however address the question of the difference between statute limitations of infringement acts and statute limitations of the action for infringement. Hence if the five-year limit stated at article 72 UPCA seems to correspond to statute limitations of the action for infringement, nothing is said about infringement acts.
The Unified Patent Court will thus bring considerable change to infringement actions and the definition of infringement acts for patentees by creating not only a single jurisdiction for European patents and European patents with unitary effect but also by providing a definition of infringement common to all Contracting States. This definition has however its limits and might need to be clarified at a later stage.
This post invites IP professionals to think differently about infringement in the context of the coming entry into force of the UPCA.
The UPC Blog awaits your comments and questions on this post and on any complementary topic.
A few weeks ago the UPC Blog was asked these questions « How is the UPC going to ensure legal certainty between the entry into force of the Unified Patent Court Agreement and the moment European patent holders or holders of a European patent with unitary effect obtain -for those who wish- an opt-out?” “ What happens when you rely on one of these patents which are under national jurisdiction until the entry into force of the UPCA (Unified Patent Court Agreement), and then go back to national jurisdiction after the opt-out?”
The Opt-out is definitely one of the most challenging area of the UPCA, and we have in this blog been paying a particular attention to this subject -you can find more information about the Opt-out here– and in this post we will focus on the relationship between the opt-out, legal certainty and the rights of prior users.
As explained in our previous posts, the opt-out will be available to European patent holders during the transitional period, which will start after the entry into force of the UPCA and will last for seven years (art 83.1). This transitional period might be renewed for a further seven years if the Administrative Committee considers it after consultation necessary (art 83.5).
Once a European patent holder has decided for an opt-out, it will need to be notified and registered. The opt-out will become effective on the day the notification of the opt-out is received by the Registry, provided that the opted-out patent is not the subject of a pending litigation. The Contracting Member States and the Preparatory Committee however still have to look into the necessary arrangements to achieve this. The opt-out will then be effective for the lifetime of the patent except if the patent holder withdraws the opt-out pursuant to art 83.4 UPCA, provided that no action has been brought before a national court.
It is here necessary to differentiate between the transitional period and the opt-out period. In fact if patent holders can only opt-out of the UPC jurisdiction during a renewable period of seven years, the opt-out will on the other hand last for as long as the patent exists.
But which rules will govern the use and/or infringement acts of an EP which happened prior to the opt-out? How is legal certainty maintained between the entry into force of the UPC Agreement and the notification and registration of the opt-out? In fact there might be for some European patents a moment where they fall under the UPC jurisdiction until the patent holder decides and registers the opt-out, putting them back under national jurisdiction. How then is fairness ensured for prior users of European patents?
Article 28 of the UPCA clarifies this situation for prior personal use: “any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.” Hence, prior user rights will be governed by national law, which will thus ensure legal certainty in that domain independently of a potential opt-out.
Moreover, it is important to note that the same is true with prior uses of an invention patented through a European Patent with Unitary Effect. In fact, following article 2 of the UPCA “patent” refers to both a European patent and a European Patent with unitary effect.
Now an uncertainty remains for the qualification of infringement acts that occurred prior to and after the opt-out. Indeed, although the definition of the infringement acts under the UPCA (article 25 and 26 UPCA) is very similar to that of the national laws of the Contracting States (eg article L. 613-3 French IP Code), it is not identical and national case law differs from one country to another. The uncertainty stands from the fact that pending the opt-out the alleged infringers should assess their risk by reference to the applicable provisions of the UPCA taking into consideration the fact that if they were to sue for infringement this would occur before the UPC and not before the national courts. In the event the patentee decides an opt-out than the alleged infringer’s assessment of his risk is flawed.
This risk is inherent to the opt-out possibility that the Contracting States have decided to offer to EP holders. One issue which does not seem to have been contemplated however is whether the national courts which would have to rule on the infringement of an opted-out patent would have to apply the UPCA rules for the period of time prior to the opt-out and the national rules for the infringement acts that occurred after the opt-out. For instance, the statute of limitation might differ (eg, Austria infringement claims must be brought within three years from the date the right holder obtains knowledge of both the infringement and the identity of the infringer whereas the UPCA states at article 72 that “(…) actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware of the last fact justifying the action.”). This subject will however be treated in more depth in a later post, soon to be published.
The UPC Blog awaits your comments and questions on this post and on any complementary topic.
Marc Tarabella, a European MEP (Group of the Progressive Alliance of Socialists and Democrats in the European Parliament) from Belgium asked in November 2013 the European Commission the following written question about Patent Trolls and the UPC:
“Are ‘patent trolls’ soon to arrive in Europe en masse? These companies, which are very active in the United States, make money by buying up patents with the sole aim of taking anyone who infringes them to court. ‘Patent trolls’ thus make no commercial use of the patents they own; rather, they use them purely as a way of pressuring other companies into giving them money.
For now, ‘patent trolls’ are largely an American problem. However, the new EU legislation on patents could change that.
1. How is the Commission preparing for this legislation?
2. Does it have concerns that the law will be abused?
Intellectual property cases may be dealt with by two courts: one focuses on the validity of the patent, while the other establishes whether the patent has been infringed or not. As both courts work independently of each other, a product may be preventively taken off the market before the issue of the patent’s validity has been resolved. What is more, this could happen in at least 13 Member States, once the single patent becomes a reality.
3. In view of the major impact such a ban would have, would this not enable plaintiffs to extract considerable sums of money on the basis of poor-quality or even invalid patents?”
Michel Barnier, on behalf of the European Commission responded in January 2014 that:
“The Commission fails to see how the recent Union legislation on patents, namely Regulations 1257/2012 and 1260/2012, could increase the activity of so called ‘patent trolls’ in Europe. To the extent that the Honourable Member’s question pertains to the Unified Patent Court (UPC), it should be noted that the UPC agreement is an instrument under international law and is not part of Union law. The matter is thus outside the Commission’s remit. The Commission will, however, provide the following factual information.
The UPC as a common specialized patent court will increase legal certainty, and a centralized patent revocation procedure will leave less room for ‘patent trolls’ to exploit current fragmentation.
The UPC Agreement provides for safeguards against ‘patent trolls’. No automatic injunctions shall be granted: the UPC has the discretion to weigh the parties’ interests and to take into account the potential harm from the grant/refusal of the injunction. The Rules of Procedure (draft of 25 June 2013) foresee a possibility to require reasonable evidence that the patent is valid and being infringed and to order an adequate security for any injury likely to be caused to the alleged infringer if the injunction is later revoked.
The UPC is a single court competent for both patent infringement and revocation actions. A local/regional division has only a possibility, after having heard the parties, to refer a counterclaim for revocation to the central division. The Rules of Procedure provide that in case of a high probability that the patent will be held invalid in the revocation procedure the court must stay the infringement proceedings. The objective is to ensure that the patent validity is dealt with before the infringement action can proceed.”
This written question comes after the open letter signed by a number of very important groups such as Google, Apple, Cisco, Microsoft or Intel in September 2013 who raised concerns about the danger of Patent Trolls for the UPC, and especially in relation with injunctions. The UPC injunction power will in fact extend beyond a single country to most of Europe, which could lead to a rise of abusive litigation before the UPC. The open letter argued that “a rule that does not offer sufficient guidelines on when to grant injunctions will create strong incentives for abusive behaviors and harm the innovation that the patent system is designed to promote”, it also highlighted the fact that to mitigate the potential for abuses of Patent Assertion Entities, the UPC should be guided by strong rules of procedure assessing proportionality prior to granting injunctions.
The 15th draft of the rules of procedure so far deal with injunctions in rule 211 which sets out the criteria for the granting of preliminary injunctions. It states that “(1) The Court may in particular order the following provisional measures: (a) injunctions against a defendant (…) (2) In taking its decision the Court may require the applicants to provide reasonable evidence to satisfy the Court that (…) the patent is valid and his right are being infringed. (3) (…) the Court shall have discretion to weigh up the interests of the parties”. What causes concerns is of course the word “may” which indicates that it would be at the discretion of the UPC and its judges to apply the proportionality safety nets set out in rule 211. The definitive draft of the rules of procedure has not been yet released but it can only be hoped that safeguards against patent trolls will be secured.
The UPC Blog awaits your comments and thoughts on this issue:
Do you think that the UPC might be targeted by Patent Trolls?
Do you think that the draft rules of the UPC are too weak to prevent abusive litigation?
Or on the contrary, do you think as Michel Barnier, that the existing safeguards are enough?
Do you think that the answer to that problem might ultimately lie in the hands of the newly trained UPC judges?
Danes will vote in May 2014 on whether or not to join the EU’s Unified Patent Court.
As Denmark has an opt-out from EU legislation on justice, more than 80% of MPs have to support Denmark joining the Unified Patent Court. If the government fails to gather such support it must call a referendum.
However, while the Danish centre-left government is in favour of joining the Unified Patent Court, the anti-EU parties in the parliament, the semi-communist Red-Green Alliance and the right-wing nationalist Danish People’s Party, have been blocking an agreement.
The Danish People’s Party (right-wing nationalist party) had demanded that the government either set up new rules for EU migrants in an attempt to avoid ‘benefits tourism’ or promise a referendum on the banking union, which Denmark, as a non-euro country, still has to decide on, in return for backing the Unified Patent Court.
In August, Danish opposition leader Lars Løkke Rasmussen told Prime Minister Helle Thorning-Schmidt to give the Danish People’s Party “whatever it takes” to get the party to support the patent court. However, on December 19th 2013 Danish Minister for EU Affairs Nick Hækkerup confirmed that a referendum would take place on 25 May 2014, the same day as the European Parliament elections in Denmark.
One of the many challenges the UPC faces and which is currently the subject of questions and debates is the impact of the ratification of the European Patent Convention by member states on the UPC Agreement, or what is commonly called “the Malta problem”. The UPC Blog would like here to introduce the main elements of the debate and open the topic to discussion.
The European Patent Convention was signed on 5 October 1973 and entered into force in 1977 for seven countries (Belgium, Germany, France, Luxembourg, Switzerland, Netherland and the United Kingdom). Malta on the contrary is a late-comer to the European Patent Convention and only joined on 1 March 2007, which means that European patent applications filed before 1 March 2007 are not valid in Malta by virtue of Article 79 (1) EPC. However, assuming that Malta ratifies the Unified Patent Court Agreement, its late ratification of the EPC will have direct consequences for the Unitary Patent at the scale of Europe.
Article 3(1) of regulation 1257/2012 requires in fact for the unitary effect “a European Patent granted with the same set of claims in respect of all the participating Member States”. The same article further states that “a European Patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.” Malta having been a member of the EPC since only 1 March 2007, any European Patent application filed before that date will not get a grant valid for Malta. Hence the granted European Patent will not have the same set of claims in all participating member states, since it would have a valid claim set for some states and no set at all for Malta.
This situation of course seems absurd: assuming that Malta ratifies the Agreement in a timely fashion it would appear that no European patent application filed before 1 March 2007 could be eligible to become a Unitary Patent.
One could argue that this is not really a problem since it will resolve itself. In fact, most applications will at some point have a filing date situated after 1 March 2007, and will thus be eligible. However, this problem will not in the future be limited to Malta. In fact what about new and future EU members? As for example Croatia, which joined the EU on 1 July 2013 and joined the EPC as recently as 1 January 2008, after being an extension state from 1 April 2004. As an EU member, Croatia is now able to opt in to the Unitary Patent package. So, if Croatia ratifies the Agreement, the same problem will apply, except that the cut-off date will now be 1 January 2008.
Other recent EPC-joiners that aren’t yet EU members are Norway (EPC since 1 January 2008), Albania (EPC since 1 May 2010), Macedonia (EPC since 1 January 2009), Serbia (EPC since 1 October 2010), and San Marino (EPC since 1 July 2009). Any of these joining the EU in the near future, and becoming Member States of the unitary patent, would shift the cut-off date even later.
It thus seems to the UPC Blog that the Unified Patent Court will have to decide between three possible interpretations of article 3 (1) of regulation 1257/2012.
The first interpretation would be a literal interpretation of article 3 (1) which would have for consequence that no European Patent with Unitary effect could be delivered for European Patents granted before 2007. This interpretation seems of course to be very unlikely.
The second interpretation would consider that if a European patent is not available in a country, the Unified Patent Court should then ignore that country rather than disqualify the Unitary Patent. The requirement of a European Patent “granted with the same set of claims in respect of all the participating Member States” could hence be read as follows: in all participating Member States for which the patent is granted, it should have the same claims. But if the patent is not granted in a particular member state at all, the only effect is that it will not be included in the unitary effect. To a certain extent this will happen anyway. In fact, not all member states will ratify the UPC Agreement at the same time. So a European Patent with Unitary Effect obtained a few years after the Unified Patent Court Agreement enters into force will very probably concern more countries than a European Patent with Unitary Effect granted early 2015 (assuming that the UPC Agreement comes into force in early 2015 as planned by the UPC preparatory committee).
Finally, the third interpretation of article 3 (1) would require the Court to ignore the date of entry into force of the European Patent Convention. This interpretation would mean that a European Patent which could not have been filed for Malta before 2007 could get unitary effect on the basis of a European Patent with Unitary Effect much older than 2007. This situation would however affect third parties who may have relied on the fact that Malta was not covered by a European Patent before 2007.
The UPC Blog awaits your thoughts, comments and questions on the “Malta problem”.