Wow, One more article on the Unitary Patent!
Yes we know, this is probably not the most original subject to discuss nowadays. However, four years after the first regulations were signed, the unitary patent is finally about to come into force…they say.
Well, we hear this every year to be honest, so why should we believe it this year? Maybe because Brexit, which should have definitely buried the unitary patent has been overcome? Possibly.
Anyway, we don’t have any power on this, we only have to wait and see if, as they predict, this unitary patent will come into force during the first quarter of 2018 (source: https://www.epo.org/law-practice/unitary/unitary-patent/start.html).
For this reason, it may be relevant to make an update of the situation and of the actual meaning of a unitary patent, keeping in mind that there is anyway a good chance that this article will be reused in an identical form next year.
Regulation and Agreement
It all began in 2013 when two regulations on Unitary Patent protection were signed. More particularly, on 20 January 2013, entry into force of two EU regulations, No. 1257/2012 (creation of the Unitary Patent protection) and No. 1260/2012 (translation arrangements) signed by 25 of the 28 EU member states. On 2 October 2015, Italy joined the cooperation.
These regulations are now in force for 26 of the 28 EU member states with the exception of Croatia and Spain. They will apply from the date of the entry into force of the Agreement on a Unified Patent Court (UPC Agreement).
25 of the 28 EU member states with the exception of Croatia, Poland and Spain signed the UPC Agreement on 19 February 2013.
It will enter into force only after ratification by at least 13 member states including France, Germany and UK. So far, 9 member states have ratified the UPC agreement: Belgium, Denmark, France, Finland, Italy, Luxembourg, Malta, the Netherlands and Sweden.
With the political situation in UK, the preparatory committee of the UPC published a statement announcing the start of the period of provisional application and the entry into force of the UPC Agreement (envisaged for 1st December 2017), will have to be postponed
Although the UK has informed the General Secretariat of the Council of the EU that it has obtained the parliamentary approval to ratify the UPCA a few days ago, it is reasonable to predict that according to Article 3 UPCA, one still lacks four ratifications including the German ratification. However, the German ratification of the UPC agreement remains uncertain at this time because of a lawsuit lodged in the German Constitutional Court concerning the German ratification of the UPCA. (https://www.unified-patent-court.org/news/message-chairman-alexander-ramsay-june-2017).
Finger crossed ….
To first make a long story short, a new Unitary Patent right (UP) has been agreed between 26 of the 28 European Union Member States (MS), which will be enforceable via a new court system: the Unified Patent Court (UPC). The UPC aims to provide an exclusive court for all decisions involving the UP and in the longer term, all European patents.
During a transitional period of seven years, European patents will be enforced or revoked before the UPC or the national courts. During the transitional period, European patents may be opted-out of the UPC for their entire life.
After the transitional period of seven years, European patents will be automatically subject to the exclusive jurisdiction of the UPC unless they have been opted-out.
National patents are unaffected by the UPC and will continue to be enforceable and revocable before the national courts only.
The Unitary patent
The Unitary Patent is “a European patent with unitary effect” throughout the territories of the 26 participating member states; it will co-exist with national patents and traditional European patents.
This situation will lead to various combinations of classical European patents and unitary patents such as for example having a Unitary Patent for the 26 participating EU member states, together with a classic European patent taking effect in one or more EPC contracting states (such as, for instance, Norway, Spain, Switzerland or Turkey).
However, no double protection will be available by a unitary patent and a classic European patent on the territory of the 26 participating member states. Double protection by a unitary patent and a national patent will be decided at the national level.
The European patents will benefit from unitary effect at the request of the patentee. As a matter of fact, the EPC granting procedure already in force is one of the major added-value of the EPO, there is therefore no need to modify it. One will keep a single EPC procedure for European and Unitary Patents, i.e. the application and examination procedures will remain unchanged and the EP vs UP choice will be available after grant.
The consequence of this situation is that a unitary patent will have a retroactive effect in the participating member states as from the date of publication of the mention of grant of the European patent.
Registration of unitary effect
As mentioned above, in order to obtain registration of the unitary effect, the patent proprietor will have to file a request for unitary patent protection with the EPO within a one-month deadline after the mention of grant is published. Did you say short time period? Well for a case-by-case decision probably...
To resume the substantive requirements, the unitary effect can only be requested for European patents that are granted with the same set of claims in respect of all 26 participating member states.
On the other hand, to resume the formal requirement, the request must be filed in writing in the language of the proceedings and must include:
- the name of the requester,
- the number of the European patent to which unitary effect is to be attributed, and
- information about the representative, and
During the transitional period:
- a full English translation if the patent is granted in French or German, or
- a full translation into any language of the EU if the patent has been granted in English.
- No further translations will be required after the transitional period, unless a legal dispute arises.
If these requirements are fulfilled, the EPO will register the unitary effect in the Register for unitary patent protection.
One of the main changes with this unitary patent will regard the payment of the renewal fees. While the current EPC system requires payment in each country were the European patent has been validated, a single renewal fee for the unitary patent will have to be paid to the EPO.
The total amount of this annual fee has not been decided yet, but a proposal involves charging the total sum of the national renewal fees payable in Germany, France, The Netherlands and the United Kingdom.
The Unified Patent Court (UPC).
Schematically it looks like this:
Clear and easy to understand! No? Ok let’s go deeper into this topic.
First let’s have a look at what will the actual jurisdiction of the UPC be.
This matter is regulated by the Article 32 UPC Agreement and states that the UPC will be the Exclusive jurisdiction in respect of actions for:
Actual or threatened infringement of classic European and unitary patents and Supplementary Protection Certificates (SPCs) and related defenses, including counterclaims concerning licences
- Declarations of non-infringement of classic European and unitary patents
- Revocation of classic European and unitary patents
- by direct attack
- by counter-claim
- Declaration of invalidity of SPCs
- Provisional and protective measures
- Damages or compensation
- Related to decisions of the EPO in carrying out the additional tasks entrusted to it in relation to the unitary patent
Whereas the national courts will be the jurisdiction in respect of actions for:
- All actions relating to classic European patents and unitary patents which do not come within the exclusive jurisdiction of the UPC, such as
- Actions relating to the right to a patent, or
- Actions relating to the transfer of a patent right
- Parallel jurisdiction with UPC concerning disputes relating to classic European patents for transitional period of at least seven years.
- Opt-out possibility with regard to European patent applications, classic European patents and SPCs, but not unitary patents.
Furthermore, during the seven-year transitional period explained above, 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 (Article 83.3 of the UPC Agreement).
There will be no possibility to opt-out a European patent with unitary effect.
It may be prolonged up to a further seven years period by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court (https://www.unified-patent-court.org/faq/opt-out)
Small word about Opting out and the so-called “Sunrise period”
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 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, but in case of co-ownership, all proprietors/patentees need to give their consent for having the opt-out effective.
An opt-out once notified and registered normally remains in force for the entire lifetime of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement. It is important to remember that once the opt-out is withdrawn there will be no possibility to request opt-out a second time for the same case. An opt-out withdrawal is final.
A further limitation to opting-out is that, once a case has been brought before the UPC by a competitor, there will be no possibility anymore to opt-out the said case. For this reason, a “sunrise period” (probably three months) between the date on which the UP and UPC come into force, where patentees will be able to opt-out their already granted patents without the risk of having the competitors bringing their patent before the UPC.
That’s it! You know everything now! Well, almost everything because as mentioned at the beginning of this article the most important point is still uncertain, when shall all this come into force? Will all the actual regulations remain the same?
- EPO, Stefan Luginbuehl (26 Feb. 2016)
Elisabeth Martineu and Matthias Kügele – August 2017