Tag: UPC Agreement

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The secondary legislative framework necessary for the implementation of the UPC adopted by the Select Committee

The Select Committee adopted on 15/12/15  a series of agreements necessary  for the implementation of the Unitary Patent package:

  • The Rules relating to Unitary Patent Protection,
  • The Rules relating to Fees for Unitary Patent Protection,
  • The Rules relating to the distribution of fees amongst the participating Member States,  
  • The Budgetary and Financial Rules.

The Committee has therefore now put into place a comprehensive and complete secondary legal framework for the unitary patent, which will allow for the implementation of the Unitary Patent package.

As the EPO President Benoît Battistelli declared, the legal far: “This is a hugely significant occasion for the European patent system. With the adoption of these rules today, the preparations for the unitary patent are complete. We are now legally, technically and operationally ready to deliver the unitary patent. The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs.”

As a reminder: The Unitary Patent system and the Unified patent Court will only come to life once thirteen states, including France Germany and the UK, have ratified the Unified Patent Court Agreement. So far eight states, including France, have ratified. See our posts on ratification here.

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Italy one step closer to become a signatory to the UPC Agreement

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

While summer was in full swing, it seems that we missed an important piece of information about the UPC Agreement…

In fact, Italy notified the European Council on 07th July 2015 of “its intention to participate in the enhanced cooperation in the area of the creation of unitary patent protection and in the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements“.

Italy, therefore, seems committed to become a signatory to the Unified Patent Court Agreement, and the 26th country to participate to the Unitary Patent.

Its letter to the General Secretariat of the Council can be found here.

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The UPC Agreement (English, French, German)

Protocol to the Agreement on a Unified Patent Court on provisional application

You can access below the UPC Agreement in English.

Télécharger (PDF, 2.91MB)

You can access below the UPC Agreement in French.

Télécharger (PDF, Unknown)

You can access below the UPC Agreement in German.

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/09/CELEX_42013A062001_DE_TXT.pdf”]

Here is the video of the UPC Agreement signing ceremony:

http://www.upc.documents.eu.com/2013-02-19_Signing_Ceremony_Int_Agreement_UPC.html

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Where to find the Conventions, Treaties, Regulations, Agreements related to the UPC?

UPC Q&A

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:

 

 

 

 

 

 

 

 

 

 

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Portugal has ratified the UPC Agreement…5 more countries to go!

Protocol to the Agreement on a Unified Patent Court on provisional application

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 Agreement will enter into force on the first day of the fourth month after the fulfilment of the following two requirements (whichever is the latest):

  1. The deposit of the thirteenth instrument of ratification, including Germany, the United Kingdom and France (the three Contracting Member States in which the highest number of European patents had effect in 2012).
  2. The date of entry into force of the amendments to Regulation (EU) No 1215/2012 (Brussels I Regulation) concerning its relationship with the Agreement.“
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Has Spain changed its mind about the Unitary patent package since its actions were dismissed by the CJEU?

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.

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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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ESOMA’s challenge of the UPCA before Belgium’s constitutional court dropped

We highlighted in May that the European Software Market Association was challenging the Unitary Patent before the Belgian Constitutional Court. ESOMA in fact believed that the Unitary Patent “violated the Belgian Constitution (by denying) Belgians equality before the law, (by discriminating) on basis of language, (by violating) the separation of powers, and (was) an illegal political maneuver by the European Patent Office”.

However the Court declared on 21 st May 2015 that ESOMA’s request was inadmissible, as it appeared that the claim was filed after the 60 day period within which the Consituational Court could address the constitutionality of Belgian laws. The law allowing the ratification of the UPCA was in fact published in the Moniteur Belge on 09th September 2014 while ESOMA’s request was only filed on 09th March 2015. The Constitutional Court therefore did not have a chance to look into details in ESOMA’s claims  and declined to consider the substantial issues allegedly at stake.

After the ECJ decision opposing Spain and the European Commission, this is thus the second decision in favour of the UPC, clearing the way for its planned entry into force in 2016.

 

The Belgian Constitutional Court decision can be found here.

 

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One more…Luxembourg has now ratified the UPC Agreement!

Protocol to the Agreement on a Unified Patent Court on provisional application

As confirmed by the Council of the European Union, Luxembourg deposited its instrument of ratification in Brussels on 22/05/15. It is thus official: Luxembourg has ratified the UPCA. Luxembourg is the first country to ratify the UPCA in 2015 and hopefully not the last!

In fact, seven out of twenty-one countries have now ratified the UPCA. However for the UPC Agreement to enter into force a total of thirteen countries is necessary, divided as follows: France, Germany, UK  + ten other countries. The Council of the European Commission counts at the moment: France + six other countries. Therefore for the UPC to stay on track and be effective by 2016 Germany, UK + four other countries need to ratify reasonably soon.

 

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The Unified Patent Court and the Brussels 1 Regulation (recast): How has the Regulation been modified?

How was the Brussels I Regulation modified in order to accommodate the Unitary Patent and the Unified Patent Court? 

Article 89 of the UPC Agreement makes the entry into force of the Agreement dependent upon, among other conditions, the entry into force of the amendments to Regulation (EU) N° 1215/2012 or Brussels I Regulation (recast). The Brussels I Regulation (recast) was adopted on 12 December 2012 to replace Regulation (EC) N°44/2001, and its provisions apply since 10 January 2015 (Article 81 Regulation N°1215/2012). The need to amend the Brussels I Regulations arose because:

  • Under Article 71 of Regulation No 44/2001, Member States were prevented from concluding any new convention that, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments
  • The UPC Agreement does not lay down its own rules on international jurisdiction –since the rules on international jurisdiction, recognition and enforcement of judgments concerning the disputes falling within the competence of the UPC had previously been unified within the EU through the Brussels I Regulation;
  • Article 31 of the UPC Agreement states that the international jurisdiction of the UPC shall be established in accordance with Regulation N°1215/2012.

The Brussels I Regulation (recast) sets out a harmonised recognition and enforcement of foreign judgment rules in civil and commercial matters within the European Union. Regulation N° 1215/2012 is a recast version of the prior Brussels I Regulation, which had been in force since 1 March 2002. The recast Regulation applies to legal proceedings commenced in the courts of EU Member States on or after 10 January 2015; the Brussels I Regulation however continues to apply to legal proceedings commenced before that date. Both Regulations apply to all EU Member States and in order to ensure a consistent application of the Regulation throughout the European Union, any national court or tribunal is able to refer a question of interpretation of the Regulation to the Court of Justice of the European Union (CJEU).

The basic rule of jurisdiction established by the Regulation is that the defendant must be sued in the courts of the Member State in which she is domiciled. A defendant who is domiciled in one Member State may only be sued in the courts of another Member State to the extent authorised by the Regulation. The introduction of the unitary patent however led to some modifications of that rule, now contained in the Brussels I Regulation (Recast). The Unified Patent Court will in fact have jurisdiction over claims regarding the unitary patent where a defendant is domiciled in a Member State (art 71b(1) and art 71a). Where the defendant is not so domiciled then it will also have jurisdiction where a person consents to the UPC’s jurisdiction (art 71b(2))or where the patent is infringed causing damage within the EU and the defendant has property located in a country which is party to the Agreement on a Unified Patent Court and the dispute has a significant connection with any Member State to the UPC (art 71b(3)).

All necessary changes relating to the UPC  Agreement are combined in four new provisions all contained in Article 71, which states:

“1. This Regulation shall not affect any conventions to which the Member States are parties and which, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments.

2. With a view to its uniform interpretation, paragraph 1 shall be applied in the following manner:

(a)  this Regulation shall not prevent a court of a Member State which is party to a convention on a particular matter from assuming jurisdiction in accordance with that convention, even where the defendant is domiciled in another Member State which is not party to that convention. The court hearing the action shall, in any event, apply Article 28 of this Regulation;

(b)  judgments given in a Member State by a court in the exercise of jurisdiction provided for in a convention on a particular matter shall be recognised and enforced in the other Member States in accordance with this Regulation.

Where a convention on a particular matter to which both the Member State of origin and the Member State addressed are parties lays down conditions for the recognition or enforcement of judgments, those conditions shall apply. In any event, the provisions of this Regulation on recognition and enforcement of judgments may be applied.”

In order to ensure the coherent application of the UPC Agreement and the Brussels I Regulation (recast) , it was in fact necessary to address the following issues in the Brussels I Regulation (recast):

Clarify in the text of the Regulation that the Unified Patent Court and the Benelux Court of Justice are ‘courts’ within the meaning of the Brussels I Regulation:

By clarifying that both the Unified Patent Court and the Benelux Court of Justice should be considered as “courts” within the meaning of the Brussels I Regulation (recast), it ensures that the international jurisdiction of these courts will be determined by the Brussels I Regulation. It in particular ensures that defendants which would expect to be sued in a specific Member State on the basis of the rules of the Brussels I Regulation may be sued before either a division of the Unified Patent Court or before the Benelux Court of Justice which is located in another Member State than the national courts designated on the basis of the Brussels I Regulation. Legal certainty and predictability for defendants requires that this change of territorial jurisdiction is set out clearly in the text of the Brussels I Regulation.

Clarify the operation of the rules on jurisdiction with respect to the Unified Patent Court and the Benelux Court of Justice insofar as defendants domiciled in Member States are concerned. Create uniform rules for the international jurisdiction vis-à-vis third State defendants in proceedings against such defendants brought in the Unified Patent Court and Benelux Court of Justice in situations where the Brussels I Regulation does not itself provide for such rules but refers to national law;

The new rule in Article 71b, paragraph 1 prescribes that the Unified Patent Court and the Benelux Court of Justice will have jurisdiction any time when a national court of one of the respective Contracting Member States would have jurisdiction based on the rules of the Brussels I Regulation. On the contrary, the Unified Patent Court and the Benelux Court of Justice will not have jurisdiction when no national court of a Contracting Member State has jurisdiction pursuant to the Brussels I Regulation.

Define the application of the rules on lis pendens and related actions in relation to the Unified Patent Court and the Benelux Court of Justice on the one hand and the national courts of Member States which are not Contracting Party to the respective international agreements on the other hand. Define also the operation of these rules during the transitional period referred to in Article 83(1) UPC Agreement:

The new proposal in Art. 71b, paragraph 2 extends the Regulation’s jurisdiction rules to disputes involving third State defendants domiciled in third States. In addition, the Unified Patent Court’s and Benelux Court of Justice’s jurisdiction to issue provisional, including protective measures is ensured even when the courts of third States have jurisdiction as to the substance of the matter.

As a result of this extension, access to the Unified Patent Court and the Benelux Court of Justice will be ensured in situations where the defendant is not domiciled in an EU Member State. In addition, such access is ensured independently of which instance or division within the Unified Patent Court is seized of a claim.

In addition, the new proposal in Art. 71b, paragraph 3 establishes one additional forum for disputes involving defendants domiciled outside the EU. The proposal provides that a non-EU defendant can be sued at the place where moveable assets belonging to them are located, provided their value is not insignificant compared to the value of the claim and that the dispute has a sufficient connection with the Member State of the court seized. The forum of the location of assets balances the absence of the defendant in the Union.

Clarify the operation of the rules on recognition and enforcement in the relations between Member States which are and Member States which are not Contracting Parties to the respective international agreements:  

The new rule in Art 71c prescribes that the rules on lis pendens and related actions of the Brussels I Regulation (recast) apply between the Unified Patent Court or the Benelux Court of Justice on the one hand and the courts of non-Contracting Member States on the other hand. Finally, this Article also prescribes that the rules of the Brussels I Regulation (recast) apply when, during the transitional period referred to in Article 83(1) UPC Agreement, proceedings are brought before the Unified Patent Court on the one hand and before the national courts of Contracting Member States to that Agreement on the other hand.

Clarify the operation of the rules on recognition and enforcement in the relations between Member States which are and Member States which are not Contracting Parties to the respective international agreements:

Art. 71d regulates the recognition and enforcement of judgments of the Unified Patent Court and the Benelux Court of Justice in Member States which are not Contracting Parties to the respective international agreements, as well as the recognition and enforcement of judgments given in Member States which are not Contracting Parties to these agreements in matters governed by such agreements which need to be recognised and enforced in Member States Contracting Parties to the international agreements.