Unitary Patent ratification process table.

Unitary patent – ratification progress

Member State	Participation in the enhanced cooperation on the unitary patent protection	Signature of the Agreement on a Unified Patent Court	Ratification of the Agreement on a Unified Patent Court
Austria	Yes	19.02.2013	06.08.2013
Belgium	Yes	19.02.2013	06.06.2014
Bulgaria	Yes	05.03.2013
Croatia	No	No
Czech Republic	Yes	19.02.2013
Cyprus	Yes	19.02.2013
Germany	Yes	19.02.2013
Denmark	Yes	19.02.2013	20.06.2014
Estonia	Yes	19.02.2013
Greece	Yes	19.02.2013
Finland	Yes	19.02.2013	19.01.2016
France	Yes	19.02.2013	14.04.2014
Hungary	Yes	19.02.2013
Ireland	Yes	19.02.2013
Italy	Yes	19.02.2013
Latvia	Yes	19.02.2013
Lithuania	Yes	19.02.2013
Luxembourg	Yes	19.02.2013	22.05.2015
Malta	Yes	19.02.2013	09.12.2014
The Netherlands	Yes	19.02.2013
Poland	Yes	No
Portugal	Yes	19.02.2013	28.08.2015
Romania	Yes	19.02.2013
Slovakia	Yes	19.02.2013
Slovenia	Yes	19.02.2013
Spain	No	No
Sweden	Yes	19.02.2013	05.06.2014
United Kingdom	Yes	19.02.2013

Source: Council of the European Union

Portugal: The Portugese Parliament passed on 10/04/2015 a passed a motion brought by the Council of Ministers to approve the Agreement on a Unified Patent Court. The ratification will however only be finalised after the presidential assent will be proclaimed by decree. Portugal will then need to deposit its instrument of ratification in Brussels for it to be effective. Moreover, according to Bristows UPC “the Commission for Foreign Affairs and Portuguese Communities, which studied the motion before it was voted by the full Assembly, highlighted the need for Portugal to establish a local division of the UPC, although the government has not yet formally expressed a view on the subject, and it was generally thought previously that Portugal would not set up a local division.“

5 May 2014

The Transitional Period and the Opt-out

I. The transitional period:

The UPC Agreement provides for a transitional period of seven years, which may be prolonged up to a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.

During the transitional period the following options will be possible regarding European patents without unitary effect:

· Actions for infringement or for revocation may still be brought before national courts (Article 83.1 of the UPC Agreement).

· A proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, 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 the register. It will be possible to withdraw such an opt-out at any time as stated in Article 83.3 of the UPC Agreement

There will be no possibility to opt-out a European patent with unitary effect.

II. The Opt-out system in details:

(A) The opt-out system and its relationship with the European Patent and the European Patent with Unitary Effect:

The Opt-out and the European bundled patent:

Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.

The unity of application and the Opt-out system:

The unity of an application and of the patent, in case of several applicants or several proprietors, is a basic principle of patent law as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.

The Opt-out and the UPC’s jurisdiction:

Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.

The Opt-out system, the European patent and the European patent with unitary effect:

If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted. An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.

(B) Registration of Opt-out by the UPC’s Registry:

Opting-out fee:

The Contracting Member States in the Preparatory Committee have not yet decided if there will be an opting-out fee.

2.Registration of the opt-out:

In the interest of legal certainty for both the proprietor or applicant and third parties, it will indeed be important that the opt-out is entered into the Registry and becomes effective on the day the notification of the opt-out is received by the Registry. The Contracting Member States and the Preparatory Committee do still have to look into the necessary arrangements to achieve this.

(C) Opt-out and the choice of forum during the transitional period:

Pursuant to Article 83.1 of the UPC Agreement during an initial period of seven years after the entry into force of the UPC Agreement any proprietor of a European patent or any applicant can initiate proceedings, in particular infringement proceedings, before national courts, regardless of whether the European patent or application concerned has been the subject of an opt-out.

But will it be possible to initiate a revocation action in the UPC if someone else has already initiated an infringement action before the national courts? It will normally be possible for a party to initiate a revocation action before the UPC even if the proprietor of the European patent has initiated an infringement action before a national court. If the proprietor of the European patent wants to avoid a revocation action before the UPC he needs to make use of the possibility to opt-out from the jurisdiction of the UPC.

16 March 2014

UPC and Infringement Actions:

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.

7 March 2014

Opt-out and legal certainty

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.

21 February 2014

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?

16 January 2014

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”.

13 November 2013

French Prime Minister submits bill for the Ratification of the UPC Agreement:

On October 23^rd, the French Prime Minister Jean-Marc Ayrault submitted to the French Senate a bill authorizing the ratification of the UPC Agreement. It now needs to be discussed by the National Assembly (French House of Representatives) before being finally adopted. The Bill was however introduced under the “Procedure Accélérée” (expedited procedure), which limits the number of times a Bill passes between the two chambers (the Assemblée Nationale and the Sénat) and is usually used to speed up a bill’s progress. This is particularly noteworthy as France is one of the three mandatory ratification countries for the implementation of the UPC regime.

The bill can be found on the French Senate website.