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 European Patent Organisation through its virtual learning centre has published a webinar on the Unitary patent and the Unified Patent Court. Maybe not as thorough as our posts but it is a playful introduction to the topic. Just click here.
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.
Map indicating the countries which participated in the enhanced cooperation on the UPC:
Map of the UPC Agreement Signatory States:
Map indicating the countries which have already ratified the UPC Agreement:
Source: Council of the European Union
Which EU legislation provides for Unitary protection?
The European patent with unitary effect relies upon three separate pieces of legislation (unitary patent, language regime and unified patent court).
More related EU legislation can be found in the Sources pages.
(A) The construction of the unitary effect:
As Professors Jean Christophe Galloux and Bertrand Warusfel explain in their article “The Unitary Patent and the future Unified Jurisdiction[1]”, the UP is a “unionist graft transplanted on the European patent”. The legal mechanism is in fact quite simple: the Convention on the European Patent governs the acquisition of the European patent until it is delivered. The European regulations adopted on 17th December 2012 and published on 31st December 2012 then govern the unitary patent.
Regulation 1257/2012 describes and explains the unitary protection and unitary effect in the following words[2]:
“Unitary patent protection should be achieved by attributing unitary effect to European patents in the post-grant phase by virtue of this Regulation and in respect of all the participating Member States. The main feature of a European patent with unitary effect should be its unitary character, i.e. providing uniform protection and having equal effect in all the participating Member States. Consequently, a European patent with unitary effect should only be limited, transferred or revoked, or lapse, in respect of all the participating Member States. It should be possible for a European patent with unitary effect to be licensed in respect of the whole or part of the territories of the participating Member States. To ensure the uniform substantive scope of protection conferred by unitary patent protection, only European patents that have been granted for all the participating Member States with the same set of claims should benefit from unitary effect.” (Emphasis added)
The temporary protection of the European patent is given to this patent until the publication of the European patent and the delivery of the unitary effect.
(B) The legal nature of the unitary patent:
As explained in Regulation 1257/2012, the UP is not a new intellectual property title but a new legal attribute given to an already existing title, the European patent:
“The unitary effect attributed to a European patent should have an accessory nature and should be deemed not to have arisen to the extent that the basic European patent has been revoked or limited.[3]”
It is in fact not the result of a specific procedure of delivery and does not have a specific time limit. The condition of its annulation and its revocation moreover, derive entirely from the Convention on the European Patent and national laws, ant not from EU law.
The unitary effect delivered to a patent has hence « an accessory character [4]», i.e. the unitary effect can be extinguished without the European patent disappearing, and the European patent can be granted without the unitary effect.
(C) The conditions of obtaining the unitary effect:
The deliverance of the unitary effect necessitates three cumulative conditions:
The unitary effect must be asked by the patent owner within a month from the patent publication in the Bulletin Européen des brevets.
The unitary effect must be registered in a special register: the “register of patent protection by unitary patent”.
The European patent must offer the same protection for the different states participating to the Unitary Patent. Article 3.1 of regulation 1257/2012 in fact states: “A European patent granted with different sets of claims for different participating Member
[1] J-C. Galloux, B. Warusfel, « Le brevet unitaire et la future jurisdiction unifiée », Propriétés Intelectuelles, Avril 2013 n°47.
[2] Regulation 1257/2012, paragraph 7
http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:361:0001:0008:en:PDF
[3] Regulation 1257/2012, paragraph 7
http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:361:0001:0008:en:PDF
[4] Jean Christophe Galloux and Bertrand Warusfel
After over 30 years of trying, the European Parliament and the Council have agreed on how to create a EU-wide patent regime to protect inventions better, cut costs and boost competitiveness.
The idea of a unitary patent valid throughout the European Economic Community was already being aired when the EEC was founded in 1957. In 1973 a “unified Community patent” was to be created by the Munich Convention, but the agreement never entered into force. After another unsuccessful attempt was the Luxembourg Agreement of 1989. In 1997, the European Commission published a Green Paper on the “Community patent”, followed by a proposal in 2000. A revised proposal was then put forward in 2004, but sunk by disagreement on language issues. The unitary patent proposal was finally tabled in 2011.
(A) The current system:
Currently in Europe it is possible to apply for a patent through three routes:
Under the National route, applicants can apply for a patent in one or just a few countries within Europe. It is then necessary to file the application at the IP offices in the countries for which the protection is sought. The national route leads to national rights and confer protection at national level.
Under the International route, the Patent Cooperation Treaty (PCT) provides a unified procedure for 137 different contracting states. A PCT application is a “placeholder application” for national filings in individual countries, which is often referred to as an international application.
Under the European route, applicants are granted European Patents for some or all of the contracting states to the European Patent Convention (EPC). They can also be extended to the current extension states[1]. A European Patent is a bundle of national patents. Under Article 2(2) EPC a European patent shall, in each of the contracting states for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by all that state, unless otherwise provided by the EPC. Each of these national patents may be subject to national translation and validation requirements and legal proceedings, and must be renewed individually in each country. The European Patent Convention established a centralized procedure for granting European patents. This procedure is used to process a single patent application in English, French or German, which are the three official languages of the European Patent Organization (EPO), a non-EU body. The European Patent Office (EPO) is able to search, examine and grant patents in a single procedure for up to 38 European states under the European Patent Convention (EPC).
However, a patent issued by EPO must be validated in all the countries where protection is sought. The validation procedure entails high costs, especially for translation services, and makes EU-wide patent protection thirteen times more expensive than in the US.
This current system will however remain available, though these European bundle patents may be subject to the jurisdiction of the Unified Patent Court (UPC) instead of the national courts of each member state. Applicants will also be able to continue to obtain national patents from the patent offices of each participating country, and go through the Patent Cooperation Treaty route.
(B) What is the aim of the Unitary Patent?
The aim of creating a EU patent with unitary effect is twofold.
First, to reduce current patenting costs. According to the European Parliament the cost could be cut by up to 80%[2].
This should improve the competitive position of EU firms vis-à-vis their counterparts in the US and Japan, where patents are much cheaper. Patenting an invention in Europe can be costly because once granted, a European patent can be enforced only at national level. This may well entail translating it into the official language of the country concerned. The patent holder must also pay national validation fees and annual renewal fees. Together, according to the European Parliament, these costs mean that maintaining a European patent for ten years in only six European countries can be four times more expensive than it would be in the US, Japan and many other advanced economies. The translation requirements for the Unitary Patent will be significantly simpler and cheaper, and it will be subject to a single set of renewal fees.
Second, to improve certainty as to the law and reduce litigation costs.
Patents on inventions with a high market value are frequently subject to litigation. Due to the lack of a unified litigation system, this leads to parallel lawsuits in different countries, sometimes with divergent outcomes. Currently, between 146 and 311 patent infringement cases are being duplicated annually in the EU member states. In 2013, this number is likely to rise to between 202 and 431 duplicated cases.
The Unitary Patent also offers savings for enforcement. A patentee will in fact only need to enforce their patent in one court, rather than in multiple national courts, avoiding duplicated litigation. Moreover, a Unitary Patent will be subject to a single set of rules, as opposed to the legislation of multiple countries. To enforce or to revoke today’s European Patent may entail multiple legal proceedings in various countries. The decisions of the new patent court, by contrast, will apply in all participating EU member states.
(C) Entry into force
Regulations 1257/2012 and 1260/2012 came into force on 20 January 2013. They will apply from 1 January 2014 or from the entry into force of the Agreement on a Unified Patent Court, whichever is the later date. However in order for the Unitary Patent to be available 13 member states including the UK, France and Germany must have ratified the UPC Agreement, which is not expected to occur before 2015. The status of ratification for each Member State can be found here. The European Commission will report on how the new regime is working three years after it takes effect.
(D) Countries participating
The two EU Regulations establishing the Unitary Patent were agreed using the enhanced cooperation procedure, which enabled a smaller group of EU countries to make progress. Currently 25 EU countries are participating in the Unitary Patent. Spain and Italy have so far opted out of the unitary patent package, but could join in the decision-making process at any time.
In March 2011 the Council of the European Union issued a decision authorizing enhanced cooperation for the creation of a unitary patent protection. The enhanced co-operation mechanism was set out in the Lisbon Treaty and permits nine or more member states to use the EU’s processes and structures to make agreements that bind only those countries.
Spain and Italy applied before the Court of Justice of the European Union for the annulment of this decision on 30th May 2011 and 31st May 2011 respectively, on grounds of lack of competence, misuse of powers and infringement of the treaties. The CJEU however dismissed their actions on 16th April 2013 arguing that the Council’s decision was within the boundaries of article 118 TFEU and that the decision had been taken as a last resort after the multiple unsuccessful attempts. The Court moreover rejected Spain and Italy’s argument about the Unitary Patent undermining the internal market by creating a uniform protection in one part only of the European Union. It is in fact inherent to the procedure of enhanced cooperation to create a framework only binding to Members States who have cooperated.
On 22nd April 2013, Spain lodged an application before the CJEU against the European Parliament and the Council of the European Union for two actions. It asked first to annul Regulation EU 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection for lack of legal basis, and breach of the principle of autonomy and uniformity in the application of European Union law. It also asked for the annulment of Regulation EU 1260/2012 implementing enhanced cooperation regarding translation arrangements for the unitary patent. Spain argued that the Regulation lacks legal basis and infringes the principles of non-discrimination, legal certainty, and autonomy. The Advocate General, Yves Bot, however delivered his opinion on 18th November 2014 (see our post here), and proposed that the Court of Justice of the European Union dismissed Spain’s challenge to Unitary Patent Regulations. Finally on 5th May 2015 the CJEU rejected all of Spain’s arguments regarding Regulations 1257 and 1260/2012 and dismissed both cases (see our post here for more details).
Italy has since signed the Unified Patent Agreement on 02nd February 2013 and requested to take part in the enhanced cooperation on 07th July 2015. Its request was accepted by the European Commission on 30th September 2015.
You can find all CJEU judgments in our final post on Spain v Council of the European Union.
[1] States recognising European patents upon request : Bosnia and Herzegovina, and Montenegro.
[2] http://www.europarl.europa.eu/news/en/news-room/content/20121205BKG57397/html/The-new-EU-unitary-patent-QA