Tag: Discussion

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What is the impact of the UK’s referendum on its EU membership on the UPCA?

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

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.

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Actavis v Eli Lilly: When the High Court of Justice rules across multiple jurisdictions… Isn’t the need for a Unified Patent Court becoming even more flagrant?

Actavis v Eli Lilly: when the High Court of Justice rules across multiple jurisdictions… Isn’t the need for a Unified Patent Court becoming even more flagrant?

 

Background of the case and Nature of the claim:

On 15 May 2014, the High Court of Justice in the Patents Court division handed down a significant judgment in Actavis v Eli Lilly, granting a declaration of non-infringement across multiple European jurisdictions in respect of the UK, French, Italian and Spanish designations of a European Patent. Actavis in fact sought a declaration that their proposed launch of a generic pemetrexed product to compete with Lilly’s cancer treatment product Alimta, would not infringe Lilly’s EP1313508 covering pemetrexed disodium. Actavis had indicated to Lilly that they would seek marketing approval for their competing product by reference to Alimta and were seeking to clear the path of any obstacles that would prevent this. Lilly counterclaimed for threatened infringement in relation to the UK designation of the patent.

Before going more in-depth into this decision it is important to look at the decisions for the same claim rendered on 27 November 2012 and 21 May 2013 by respectively the Patent Court and the Court of Appeal which laid the legal basis of the 2014 decision.

 

In 2012 Arnold J passed a judgment on three procedural issues relating to the service of the claim (§ 35) and the question of the exercise of the Court’s jurisdiction on the ground of forum conveniens. The question before the court was thus whether the UK Court could determine all five claims together, or whether they should be tried separately in their respective national courts.

It is important to highlight three essential points of that judgment.

  • First Lilly is not domiciled in an EU Member state. It followed that in accordance with article 4(1) of the Brussels I Regulation which states “If the defendant is not domiciled in a Member State, the jurisdiction of the courts of each Member State shall, subject to Articles 22 and 23, be determined by the law of that Member State” the jurisdiction of the court was a matter for English law.

 

  • Second, Actavis did not challenge the validity of the Patent (§ 29). This point is essential as in these circumstances “this Court was not required to decline jurisdiction by virtue of article 22(4) of the Brussels I Regulation, which confers exclusive jurisdiction over challenges to the validity of registered intellectual property rights on the Courts of the States where they are registered.” Arnold J considered that as the validity or registration of the patents at stake was not part of the litigation, national courts did not have exclusive jurisdiction over any litigation deriving from them in their respective registration State. A court in the United Kingdom applying English Law can therefore determine any issue of infringement of a foreign patent as long as its validity is not at stake.

 

  • Third, Arnold J points out that, in the light of Lucasfilm Ltd v Ainsworth, Lilly did not dispute the justiciability before the English Court of the claims raised with regard to the non-UK designations. The Supreme Court in Lucasfilm Ltd v Ainsworth in fact established that the infringement of foreign copyrights were justiciable before the English Courts. For Lord Walker and Lord Collins, the modern trend is in favour of the enforcement of foreign intellectual property rights: “First, article 22(4) of the Brussels I Regulation only assigns exclusive jurisdiction to the country where the right originates in cases which are concerned with registration or validity of rights which are “required to be deposited or registered” and does not apply to infringement actions in which there is no issue as to validity. This can rarely, if ever, apply to copyright. Second, the Rome II Regulation also plainly envisages the litigation of foreign intellectual property rights and, third, the professional and academic bodies which have considered the issue, the American Law Institute and the Max Planck Institute, clearly favour them, at any rate where issues of validity are not engaged”(see §109).

Whence, Arnold J states at paragraph 89 that “If (…) one considers the reasons given in Lucasfilm v Ainsworth at [104]-[110] by Lord Walker of Gestingthorpe JSC and Lord Collins of Mapesbury (…)  for holding that there is no subject matter limitation on jurisdiction, in my opinion they are equally relevant to the operation of the forum non conveniens doctrine.” Arnold J in fact considers that if patents are no different to copyrights for the purpose of justiciability, they should then be treated no differently for the purposes of forum non conveniens –when validity is not an issue.

The forum non conveniens doctrine allows a court to dismiss a civil action where an appropriate and more convenient alternative forum exists in which to try the action. The appropriate forum is the one in which the case may most suitably be tried in the interests of all the parties and the ends of justice. Permission to serve the proceedings outside the jurisdiction will then only be granted if the court is satisfied that the other jurisdiction is the proper place (or forum conveniens) in which to bring the claim.

Actavis argued of course that England was the appropriate place for a trial as “first, it would mean that the case would be conducted by one team of lawyers on each side using one set of factual and expert witnesses (although in the present case it appears unlikely that there will be any need for factual witnesses), thereby saving costs for both sides. Secondly, it would enable the case to be determined by reference to one law, namely English law, if Lilly chose not to raise any issue as to foreign law, thereby saving even more costs. Thirdly, even if different laws were applied, it would mean that one court (and one court on appeal) would determine all five claims, thereby eliminating the prospect of inconsistent decisions unless they really were mandated by the different national laws’ approaches to Article 69 EPC and the Protocol.” Arnold J found these arguments compelling, rejected Lilly’s position as to the cost of the defense (see §98) and declared that England was the proper forum to hear the five claims.

Following this decision Lilly lodged an appeal (which can be read here), dismissed by the Court of Appeal on 21 May 2013. It is nonetheless important to note that the Court only considered the issues of procedure and service of the claim. The substantial issue -whether “the judge ought to have granted a stay on the grounds of forum non conveniens”- was not looked into by the Court. Kitchin LJ in fact after upholding the first issue (whether the judge was right to hold that Lilly’s solicitors, Hogan Lovells, agreed to accept service of proceedings in the first action), formed the view that this conclusion was dispositive of the whole appeal.

The Judgment passed in May 2014 is  the last chapter -to date- of the Actavis v Lilly saga, and seems to bring a definite if unsatisfactory answer to the question of the justiciability of the infringement of the foreign counterparts of a European Patent.

The substantive issue and the claim for declaration of non-infringement:

Concerning the substantive issue, Arnold J found that “neither pemetrexed diacid nor pemetrexed dipotassium nor pemetrexed ditromethamine falls within the scope of the claims 1 to 12 of the UK, French, Italian, or Spanish designations of the patent”. These claims can be read here. Hence, the dealings in permetrexed diacid, dipotassium and ditromethamine by Actavis do not constitute direct or indirect infringement of the UK, French, Italian or Spanish designations of the Patent.

Arnold J then proceeded to the analysis of the law applicable to the declaration of non-infringement (“DNI”) claims. The Judge made an important difference between the law applicable to the question of whether Actavis’ proposed acts infringed each non-UK designation of the Patent and the law applicable to the DNI claim made by Actavis. Concerning the first question, or whether Actavis’ proposed acts infringed each non-UK designation of the Patent, Arnold J considered that lex loci protectionis, the substantive patent law of the relevant country, applied. As for the second question, i.e. which law should be applied to the DNI claim, the Judge had to decide between Actavis’ contention that lex fori -i.e. the law of the jurisdiction in which relief is pursued- should apply, and Lilly’s contention that on the contrary lex loci protectionis was relevant. Two interpretations of the nature of the rules governing the declaration of non-infringement were opposing each other. Actavis in fact contended that these rules should be considered as part of evidence and procedure and should thus be governed by article 1(3), which excludes these areas from the scope of the Rome II Regulations at the benefit of national jurisdictions. Article 1(3) hence states: “

“This Regulation shall not apply to evidence and procedure (…)”

Lilly on the contrary argued that a declaration of non-infringement is a remedy in the sense of article 15 (c) and as such should be within the scope of the Regulation. Article 15 (c) in fact states:

“The Law applicable to non-contractual obligations under this Regulation shall govern in particular:

(…)

(c) the existence, the nature and the assessment of damage or the remedy claimed”

 

After considering the interpretation of the Rome II Regulation Arnold J found that the law that applied to the DNI claim should follow lex fori. In fact he did not accept that a DNI is a remedy in the sense of article 15(c) and “even if a DNI is a remedy, and even if it is a remedy within Article 15(c), it seems to me that Article 15(c) should be interpreted as only having the effect that the question of principle as to whether a DNI is available at all is a matter for the law applicable to the non-contractual obligation.” The judge then concluded “the rules presently in issue (the rules for obtaining negative declaratory relief) are matters of procedure within article 1(3) and are not governed by the law applicable to non-contractual obligation in accordance with Article 15”. As a result the rules determining the obtaining of a DNI fall outside of the scope of the Rome II Regulation. Thus, as explained by Arnold J in paragraph 210 “it is common ground that if Actavis are right (…) the question of the applicable law is to be determined by English private international law and that under English private international law, the applicable law is the lex fori, because English law regards the rules for obtaining declaratory relief as being procedural”.  The rules governing the claim for a declaration of non-infringement thus follow English Law.

This in consequence explains why Arnold J considers that Actavis are entitled to a DNI in respect of the UK, and foreign designations of the European Patent.  The declaration of non-infringement irrelevantly of the Patent designation being in fact governed by the lex fori, or English Law.

 

Declaration of non-infringement in respect of the UK designation applying English Law:

Once the appropriate law applying to the DNI identified, Arnold J pursued by deciding if the grant of a DNI to Actavis would meet the necessary criteria identified by English Law.

Following Messier – Dowty, a DNI can only be granted if it serves a useful purpose. This criterion will be met if the “claimant has a real commercial interest in the negative declaratory relief sought or a real commercial reason for it to be granted”. Arnold J found that Actavis should be granted a DNI in respect of the UK Patent designation as “Lilly does not seriously dispute that, if Actavis establish that dealings in their products would not amount to an infringement of the UK designation of the Patent, then Actavis should be granted a DNI in respect of that designation pursuant to the inherent jurisdiction of the Court”.

 

DNI in respect of the French, Italian, and Spanish designations applying English Law:

After establishing that the law applicable to the question of whether Actavis were entitled to a DNI in respect of the French, Italian, and Spanish designations of the patent was English law, Arnold J found that Actavis should be granted declarations of non-infringement in respect of those designations pursuant to the jurisdiction of the High Court of Justice of England and Wales, Actavis having demonstrated that they have a real commercial interest in obtaining DNIs and that these declarations would serve a useful purpose .

 

DNI in respect of the French, Italian and Spanish designations applying respectively French, Italian, and Spanish laws:

Arnold J pursued his judgment by looking at the declarations of non-infringement in respect of the French, Italian, and Spanish designations applying French, Italian and Spanish law “in case (I am) is wrong about the applicable law” on “the assumption that the relevant law is the law applicable to the non-contractual obligation”.

Finally, Arnold J helped in his appreciation of foreign laws by experts’ opinions on the granting of DNI under these jurisdictions, decided that “even if French, Italian, and Spanish law is the applicable law respectively, Actavis are entitled to a DNI in respect of the French, Italian, and Spanish designations of the Patent”.

 

In Conclusion:

This decision is remarkable in many respects. First, it is a superb example of legal craftsmanship. Second , Arnold J  innovative reasoning could inspire litigants in the UK and in other EU countries, pending the entry into force of the Unitary Patent system.  We believe that although the reasoning applied to a situation where a party was seeking a declaration of non-infringement prior to marketing potentially infringing products, thus not risking a patent infringement counterclaim, it could nevertheless be extended to infringement claims in cases where nullity counterclaims are not available, such as in cases litigated before the German patent district courts (Landgericht).  Third, this decision is a good illustration of the inefficiency of the existing system. Of course the solution is elegant and sophisticated but in the end, this is merely a “patch” aimed at fixing, albeit imperfectly, an inherent error in the European Patent system.  It is time to move from error correction and bug fixes to a brand new release of the European patent system.  No doubt that the patent lawyers will find many new opportunities to demonstrate their creativity in this new system, for a better result.

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The “Enhanced European Patent” or some long-waited-for answers on the Unified Patent Court and the Unitary Patent by the Select and Preparatory Committees.

The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.

 

The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note.  It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.

 

Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect.  However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)

 

The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)

 

The Geographical extension of the Unitary Patent:

The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent.  In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).

 

The UPC general competence:

On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).

The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement.  The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.

 

The Transitional period: (For background information on the transitional period see here) 

The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect.  The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.

 

The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.”  In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.

 

It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.

 

You can of course look at the UPCA here and the draft rules of procedures here.

 

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The UPC and Patent Trolls, round two:

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 .

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UPC and Patent Trolls…

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?

 

 

 

 

 

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The Unified Patent Court and the «Malta problem»

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”.