unitarypatent
1 September 2013PatentsBernd Christian Janssen

Getting prepared: the Unitary Patent

The idea to create a European patent valid throughout the EU is not new. Work on a Community patent started in the 1970s, but the resulting Community Patent Convention (CPC) was initially a failure.

The CPC was signed at Luxembourg on December 15, 1975 by the then nine member states of the European Economic Community. However, the CPC never entered into force because it was not ratified by a sufficient number of member states.

Fourteen years later, a new agreement relating to Community patents was signed at Luxembourg. It attempted to revive the CPC project, but failed, with an agreement that was an amended version of the original CPC. Twelve states signed the agreement but, again, it was not ratified by a sufficient number of member states.

Finally, in December 2012, the European Parliament approved legislation for the long expected unitary European patent (UP) (EU regulation 1260/2012) and unified patent court (UPC) system (EU regulation 1260/2012), and on February 19, 25 EU member states signed an agreement with the intention to participate in the UP (all except Italy, Spain and Croatia) and in the UPC (all except Spain, Poland and Croatia).

The EU regulations will enter into force after 13 member states have ratified the agreements, including Germany, the UK and France, but not earlier than January 1, 2014. Up to now none of the member states which signed the agreement has ratified it; some member states have announced that a referendum will be held to ratify the agreement. So there is still some uncertainty as to whether the UP and UPC system will come into force, and if so, when.

How the UP works

European patents, after grant, must be validated in the various member states of the European Patent Convention (EPC) becoming a ‘bundle of patents’, each of which must be enforced nationally, with varying litigation durations, costs and possibly varying outcomes. For cost reasons many patent holders choose to validate a granted European patent in a few key jurisdictions only.

In EU member states where the patent has not been validated, it is not enforceable. This makes it difficult for a patent holder to enforce the patent against counterfeiters, even in member states where the patent was validated. This is because import into the EU can legally occur through borders of member states where the patent has not been validated, and once in the EU goods may be difficult to track.

This will, at least in part, change when the UP comes into force. After grant of a European patent by the European Patent Office (EPO), the patent holder may request that the granted European patent be registered as a UP. The UP would, once established, be valid in all participating EU member states.

The UP reduces translation requirements by focusing on the three languages of the European patent (German, English and French), reducing maintenance fees with a single fee for all participating EU member states and provides for judicial procedures in one court with effect in all countries.

However, during a transitional period of at most 12 years, a patent holder will have to provide a translation of the European patent into English, if the patent is granted in either German or French language, or into any other language of the EU, where the patent is granted in English. Only in the case of a dispute, at the request of a court or an alleged infringer, will the patent proprietor have to provide a full translation into the relevant language.

A common UPC will be constituted, serving as the single court having exclusive jurisdiction in infringement and revocation proceedings involving European patents in the 25 participating states, both if individual countries are designated and for the European patent. The UPC would have two divisions: a court of first instance and a court of appeal. The court would have its seat, registry and central division in Paris, with branches in all member states that wish to set up one or more local or regional divisions.

The central division would have branches in London focusing on chemistry cases, including pharmaceuticals and human necessities, and in Munich focusing on mechanical engineering cases. The court of appeal will be located in Luxembourg and will also serve as the registry.

The UPC will have competence to hear cases regarding European patents for which a unitary effect is registered with the EPO, and for other European patents registered with countries for which the agreement is applicable. In the latter case, during a seven-year transition period, cases may also be brought before national courts and proprietors of patents may opt out of the use of the UPC.

Cases may concern patent infringement, patent revocation, declarations of non-infringement of European patents and supplementary protection certificates, as well as the establishment of damages. The local or regional divisions of the UPC are competent to decide on patent infringement actions, including provisional measures, and counterclaims for revocation, unless the court refers the counterclaim to the central division. The central divisions of the UPC are competent to decide on revocation actions and declarations of non-infringement. Under certain circumstances, actions may be combined in the central division.

When the UP comes into force it will be considerably cheaper to obtain patent protection across the EU, and probably also cheaper to maintain that protection (the costs of renewal have yet to be determined). Whether litigation under the new system becomes more effective than established patent litigation will depend on the actual court costs and the handling of the litigation by the courts.

"Whether litigation under the new system becomes more effective than established litigation will depend on the actual court costs and the handling of the litgation by the courts."

As the rules of procedure of the UPC allow preliminary objections before a complete statement of defence, on which a court will have to decide separately, and as there are a number of preliminary questions whether a case can be referred to the central division, proceedings seem to be more comprehensive than many established national proceedings.

For the time being, patent holders need to review their existing patent portfolios and decide whether they wish to opt out of the new system during the transitional period.

Bernd Christian Janssen is a lawyer at Uexküll & Stolberg in Hamburg. He can be contacted at: janssen@uex.de

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