EU - Unitary Patent / Final texts of the “patent package”

EU Patent / Unitary patent protection – final texts of the “patent package”

After political agreement had been reached on the patent package on December 11, 2012, the text of the three legal instruments were finalised. Regulation 1527/2012 on the creation of unitary patent protection and Regulation 1260/2012 on the translation arrangements were adopted on December 17, 2012 and published in the Official Journal L 361 of December 31, 2012.

The Agreement on a Unified Patent Court (UPC) was published as Council doc. 16351/12 of January 11, 2013. It is an updated and consecutively numbered version of the draft dated November 14, 2012 16222/12 containing mainly editorial amendments. According to Article 84(1), the Agreement is open for signature on February 19, 2013.

Surprisingly, the final text still contains in Article 33(2) the obligation of a regional division to refer, at the request of the defendant, an action for infringement to the central division if the infringement has occurred in the territories of three regional divisions. This provision which appeared in brackets in the draft may substantially impair the readiness of patentees to bring an action before a regional division.

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The concentration on the solving the political questions has not improved the drafting of the text in respect of clarity and preciseness. This may be exemplified by the relation of the package with supplementary protection certificates. Article 33(1) in conjunction with Article 2(h) of the Agreement seems to create the exclusive competence for actions concerning the infringement and validity of supplementary protection certificates, regardless on which type of patent the certificate is based. Thus, in the case of a national patent as basis for the certificate, national courts would continue to be competent for litigation concerning the patent, whereas the UPC would be competent for litigation concerning the certificate. This can hardly have been intended.

The time schedule of the Commission for the implementation of the system, envisaging the entering into force of the Agreement and the application of the Regulations for April 1, 2014 seems not to be very realistic. The German Patent and Trademark Office announced that it envisages an entering into force from the year 2015. Remembering the periods between signature and entering into force of the EPC and the amendments to the EPC, even that may be considered optimistic.

Read the Regulations in OJ L 361, 31.12.2012, pp. 1 and 89 here.

Read the Agreement on the UPC here.

Reported by Rudolf Teschemacher

Comments

[Konstantin Schallmoser]

Art. 83 (1) AUPC states that during transitional period, actions can still be brought before national courts. I cannot see a provision ensuring that parallel proceedings before the UPC and a national court are forbidden.

Art. 83 (3) and (4) do not cover this situation.

Can that be true? This would mean that with respect to a European Patent without unitary effect, this would allow me to start a nullity action f.ex. in France, notwithstanding the fact that an infringement and/or nullity action is already pending before the UPC...

[Konstantin Schallmoser]

It is quite logical that a Regulation does not cite an Agreement which has not been signed so far. The "relaunch" of the 44/2001 Regulation has its grounds primarily in the rules for enforcement of judgments throughout the EU. It was passed before the final versions of the two Regulations with regard to the unitary patent have been passed.

Of course they will change the new Brussels regulation, but they can only do it after the UPC has been signed.

[Mark Richardson]

Thank you for the commentary on Article 33(2). It's interesting to see where the quirks in the agreement are!

One area we've been looking at on our blog is Article 47(5) and whether it will force defendants to start separate proceedings in cases where an exclusive licensee brings the action instead of the patent owner.

http://ipcopy.wordpress.com/2013/01/22/unitary-patent-package-does-article-475-of-the-upc-agreement-hardcode-bifurcation/

[Gibus]

Note that the unitary patent regulations can only enter into force once the UPC agreement itself has entered into force. And Art. 89 UPC states that for UPC to enter into force, a revision of Brussels I regulation is needed.

The Brussels I regulation (formerly EC 44/2001) has been recasted very recently, and has been published in EU Official Journal on December 20th, 2012, L 351/1. But nothing about UPC was taken on board in this recast.