You can click on the diagram to see a bigger version of the UPC Agreement Transitory Period stages.
Transitory Period Diagram
Unitary Patent ratification process maps
Map indicating the countries which participated in the enhanced cooperation on the UPC:
Yellow: Countries which did not participate in the enhanced cooperation on the unitary patent protection
Map of the UPC Agreement Signatory States:
Yellow: Countries which did not sign the Agreement on a Unified Patent Court
Map indicating the countries which have already ratified the UPC Agreement:
Austria: 06/08/2013
France: 14/03/2014
Sweden: 05/06/2014
Belgium: 06/06/2014
Denmark: 20/06/2014
Malta: 09/12/2014
Luxemburg: 22/05/2015
Source: Council of the European Union
Unitary Patent ratification process table.
Unitary patent – ratification progress
Austria
Belgium
Bulgaria
Croatia
Czech Republic
Cyprus
Germany
Denmark
Estonia
Greece
Finland
France
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg
Malta
The Netherlands
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United KingdomSource: 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.“
The United Kingdom’s ratification process of the Unified Patent Court…nearly there!
Last week, on 14th May, the Intellectual Property Act 2014 enabling the Secretary of State to make arrangements to establish the Unified Patent Court in the UK (See section 17 of the Act) was given the Royal Assent.
The Bill had been initiated by the House of Lords, which approved it in July 2013, followed by the House of Commons in March 2014.
It is now expected that the IP Act’s provisions will start to come into force from 1 October 2014, with all measures implemented by late 2015.
This new step towards the ratification of the Unified Patent Court Agreement is especially important as the United Kingdom is one of the three countries, with France and German, which must ratify the UPC Agreement for it to come into effect.
The Preparatory Committee
Who is the Preparatory Committee and what is its function?
The Preparatory Committee is composed of all the Signatory States to the Unified Patent Court Agreement document 16351/12, of 11.01.2013. Poland, the European Commission and the EPO have observer status. Its objective is to prepare for the establishment of the UPC in order for it to be operational once the UPC Agreement enters into force. The Preparatory Committee will exist until the Court is established. Currently this is expected to last two years and during this time it has its own rules by which it is governed. You can find the rules here. Its work programme is set out in a Roadmap.
The Preparatory Committee has identified five major work streams; Legal Framework, Financial Aspects, Human Resources/Training, IT and Facilities. Each work stream has been assigned to a specific working group which have been given the task of preparing proposals to the Committee where all decisions are taken.
The Preparatory Committee is chaired by Mr Alexander Ramsay -from Sweden who is assisted by the vice-Chairman, Louise Akerblom -from Luxembourg- and the Head of Secretariat Eileen Tottie -from the United Kingdom.
EU Legislation and Unitary Patent
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).
- Regulation 1257/2012 sets up a unitary patent protection system.
- Regulation 1260/2012 deals with the language regime and translation issues related to the Unitary Patent.
- Finally, the Unified Patent Court was created through a European Union Council Agreement signed on 20 June 2013 by EU member states participating in the procedure.
More related EU legislation can be found in the Sources pages.
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.
Select and Preparatory Committees’ explanatory note on the UPC and UP.
The Select and Preparatory Committees have published recently on the UPC website an explanatory note entitled “An Enhanced European Patent System” which aims at concisely presenting the UPC and UP to the public.
The UPC Blob will soon publish a post summarizing the main points of this note.
Brussels I Regulation: EU Parliament paves the way for the UPC
Last week, the European Parliament voted to complete the legal framework for the Unified Patent Court and the Unitary Patent (IP/13/750) (523 votes for, 98 against and 7 abstentions), updating EU rules on the jurisdiction of courts and recognition of judgments. In July 2013 the European Commission had in fact proposed an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement.
It is now for the Council of Ministers to formally adopt this text in order to become law. This is expected to happen at the Council meeting in June.
Member States endorse Commission proposal to fill legal gaps for unitary patent protection
Ministers in the Council of the European Union have at the beginning of March (on March 4th) endorsed the compromise agreement on the European Commission’s proposal to complete the legal framework for Europe-wide patent protection, updating existing EU rules on the jurisdiction of courts and recognition of judgments (IP/13/750). It is the last missing part for the establishment of a Europe-wide patent protection. It is part of a package of measures recently agreed to ensure unitary patent protection in the Single Market (IP/11/470).
“By making changes to the rules on recognition of judgements, we are taking a further step on the way to the new Unified Patent Court beginning its work,” said Vice-President Viviane Reding, EU Justice Commissioner and Internal market and Services Commissioner Michel Barnier on March 4th “Today’s endorsement by Ministers confirms the commitment by Member States to set up the Unified Patent Court as quickly as possible and make unitary patent protection in the EU a reality. It is of crucial importance for Europe’s competitiveness and growth that our businesses and innovators benefit from patent protection at a lower cost.”
After Ministers reached a general approach at the December Justice Council (MEMO/13/1109), the European Parliament now needs to vote on its report in plenary, which is expected at the latest in April 2014. The Commission is also encouraging Member States to ratify the Unitary Patent Court Agreement as quickly as possible, and to complete the preparatory work required for the Court to become operational accordingly, so that the first unitary patents can be granted in the shortest possible timeframe.
The Agreement relies upon the “Brussels I Regulation” (Regulation 1215/2012) to determine international jurisdiction of the Unified Patent Court. The Commission has therefore proposed On July 26th 2013 an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement. This amendment has not however yet been passed by the European Commission.