EPLAW Patent Blog

EU - UPC Update (UK and Denmark)

UK takes first steps towards ratifying the UPC agreement / DK: Two regional chambers proposed for the Unified Patent Court, by Nicholas Fox and Ben Hall, Simmons & Simmons

On 08 May 2013, an Intellectual Property Bill¹ was announced in the Queen’s Speech which will enable the UK to implement the Unified Patent Court Agreement. The new bill, in addition to providing a basis for enabling the UK to ratify the Unified Patent Court Agreement, also makes a number of amendments to UK design law.

Clause 16 of the Bill will introduce a new section into the UK’s Patents Act giving the Secretary of State power to amend UK law to enable the Unitary Patent Court to take effect.  There are no provisions in the Bill in relation to the Unitary Patent as any changes required to implement the Unitary Patent can be made under the existing powers the government has to amend national legislation to comply with EU obligations.

EU - Statement of Objections for Motorola on potential misuse of standard-essential patents

Antitrust: Commission sends Statement of Objections to Motorola Mobility on potential misuse of mobile phone standard-essential patents, Brussels, 6 May 2013

The European Commission has informed Motorola Mobility of its preliminary view that the company's seeking and enforcing of an injunction against Apple in Germany on the basis of its mobile phone standard-essential patents ("SEPs") amounts to an abuse of a dominant position prohibited by EU antitrust rules. While recourse to injunctions is a possible remedy for patent infringements, such conduct may be abusive where SEPs are concerned and the potential licensee is willing to enter into a licence on Fair, Reasonable and Non-Discriminatory (so-called "FRAND") terms. In such a situation, the Commission considers at this stage that dominant SEP holders should not have recourse to injunctions, which generally involve a prohibition to sell the product infringing the patent, in order to distort licensing negotiations and impose unjustified licensing terms on patent licensees. Such misuse of SEPs could ultimately harm consumers. The sending of a Statement of Objections does not prejudge the final outcome of the investigation.

Read the entire press release (in English) here.

 

 

 

 

 

 

 

 

EU - Unitary Patent / Actions Spain and Italy against enhanced cooperation dismissed

Spain and Italy v Council, CJEU 16 April 2013, Case Numbers C-274/11 and C-295/11

In their actions seeking annulment of the Council’s decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection, Italy and Spain mainly submitted that Article 118 TFEU was not a proper legal basis for the Council’s decision. Following the Attorney General’s proposal (see post dated 11 December 2012), the CJEU dismisses the actions.

In particular, the CJEU concludes that the Council’s decision was taken within the competence provided by Article 118 TFEU and that it was taken as a last resort considering the fruitless stages before the contested decision. The Court rejects the plaintiffs’ argument that creating uniform protection in one part only of the Union would undermine the internal market and states that it is inherent in the concept of enhanced cooperation that acts adopted in its framework bind only participating Member States. Rather, the Court follows the Council’s position that the fragmentation of the market is to be found, not in the contested decision, but in the present situation, in which the protection offered by European patents is national.

The decision does not finally bring legal certainty for the unitary patent since Spain filed actions against the results of the enhanced cooperation, i.e. the Regulations (EU) No 1527/2012 and No 1260/2012 on the creation of unitary patent protection and on the translation arrangements (Cases C-146/13 and C-147/13). The statements of grounds of these actions are not yet available.

Read the press release of the ECJ No 47/13 (in English) here. 

Read the judgment (in English) here.

Reported by Dr. Rudolf Teschemacher

EU - Preparatory Committee of the Unified Patent Court established

Paul van Beukering and Alexander Ramsay are chair and vice-chair of the newly established Preparatory Committee which will be responsible for the setting up and coming into operation of the Unified Patent Court. They report in a letter to (amongst others) IP Judges and EPLAW dated 27 March, 2013:

"One of the first tasks of the Preparatory Committee will be to fix a roadmap for the early establishment and coming into operation of the Unified Patent Court. There was agreement amongst the participants that the tasks to be carried out are those contained in annex II to the attached document and that these should serve as a basis for the roadmap. It was also agreed that early 2015 would constitute a realistic target date for the entry into operation of the Unified Patent Court.

[...]

"The Preparatory Committee considers it to be of vital interest that stakeholders will be actively
involved in the work of the Committee. Input from industry, patent judges and practitioners will be
needed throughout the process, both at the expert level of the project teams and at a more general level. This will be realised through formal as well as informal consultations and dialogue sessions. An important instrument for communication will be the Committee’s website which will be developed shortly.

"Priority shall be given to a broad consultation on the Rules of Procedure amongst interested circles.
The Committee will do so in close cooperation with the expert group that has worked intensively on
a draft set of rules. Details about the consultation will be communicated in due time. Let us assure
you, input from stakeholders is of utmost importance to the Committee especially on this essential
element of the Committee’s work and a sufficient amount of time will be given."

EU - Agreement on a Unified Patent Court signed

EU - Agreement on a Unified Patent Court signed

The Agreement on a Unified Patent Court was signed on February 19, 2013 at a signing ceremony in Brussels by 24 EU member states. Bulgaria is said to sign in the coming days once internal procedures have been completed. Poland and Spain did not sign the agreement.

The signature of the Agreement triggers the ratification process by national parliaments. The Agreement requires 13 ratifications for entering into force, including the ratification by France, Germany and the United Kingdom.

For the documents making up the “patent package”, see the post dated 23/01/2013 here.

Read the press release of the Council Press: 61 Nr: 6590/13 here.

Reported by Dr. Rudolf Teschemacher

EU - Seminar series on the UPC

"Bird & Bird is running a series of seminars in 2013, across Europe, on the UPC. There will be various speakers at each seminar discussing how they see patent filing strategies and litigation before the UPC working in practice. This will include the latest news on the implementation of the system and the issues that are not covered by the Regulations and the Agreement, as well as a strategic view on the new choices for patent protection and for litigation. Although this is a unified system, there will be differences in approach at the various locations, which means you have to choose your options carefully."

Speakers include Paul van Beukering, Manager of Intellectual Propety Unit, Ministry of Economic Affairs, The Netherlands and Samuel Granata, Judge in the commercial court of Antwerp (Belgium).

Seminar dates and locations are as follows:

Thursday 7 March: The Hague
Thursday 21 March: Munich
Thursday 18 April: London
Friday 31 May: Paris

The program of the first meeting is posted below:

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.

EU - Parliament approves EU unitary patent rules

Parliament approves EU unitary patent rules, Plenary Session Competition − 11-12-2012 - 13:00

"EU inventors will soon be able to get a unitary patent at last. After over 30 years of talks, a new regime will cut the cost of an EU patent by up to 80%, making it more competitive vis-à-vis the US and Japan. MEPs cut costs for small firms and tailored the regime to their needs, in a compromise deal with the Council endorsed by Parliament on Tuesday.

"In three separate voting sessions, MEPs approved the so-called "EU patent package" (unitary patent, language regime and unified patent court)."

Read the entire press release here.

EU - Unitary Patent / AG proposes to dismiss actions brought by Spain and Italy

Joined cases Spain v. Council and Italy v. Council, Opinion A-G, Court of Justice EU, 11 December 2012, Case Numbers C-274/11 and C-295/11

"Advocate General Bot proposes that the Court dismiss the actions brought by Spain and Italy against the Council’s decision authorising enhanced cooperation in the area of the unitary patent

"Enhanced cooperation must aim to further the objectives of the European Union, protect its interests and reinforce its integration process. A decision authorising enhanced cooperation is to be adopted by the Council as a last resort, when it has established that the objectives of such cooperation cannot be attained within a reasonable period by the Union as a whole1. The decision is adopted by the Council on a proposal from the Commission and after obtaining the consent of the Parliament."

Read the entire press release (in English) here.

Read the opinion of the Advocate General (in English) here.

EU - Exclusivity, Transitional Arrangements and Opt-out / Risk of financial disaster for small companies in patent litigation

Exclusivity, Transitional Arrangements and Opt-out; Risk of financial disaster for small companies in patent litigation, paper presented at the ERA/Queen Mary Conference in Paris by Jochen Pagenberg, Bardehle Pagenberg

I Introduction

The crucial point for success or failure of the whole court system is the quality, efficiency and cost of the proceedings before the new court. The shift of jurisdiction from the national courts to the Unified Patent Court (UPC) after a transitional period of only seven years with exclusive jurisdiction also for EP patents has therefore been a point of dispute from the beginning. Nobody seems to have requested this exclusivity, but nobody in Brussels was willing to change it either.

Keeping the national courts as a back up for litigating EP patents would solve a great number of open questions and problems in particular for small and medium enterprises (SMEs) which fear that they have been forgotten in the political discussion.

II Promises of alleged improvements

1. Industry as well as practitioners had always been promised that the introduction of the unitary patent and the corresponding UPC would ensure expeditious and high quality decisions which were to be measured against the best existing national patent courts. In this context users had emphasized that abolishing jurisdiction of the experienced national courts for EP patents before the UPC will have been tested and proven its quality would constitute a serious error. To force patentees of EP patents who only need protection in a few countries into the same judicial system as owners of unitary patents who need protection for the entire EU disregards the different needs of users.

Read the entire paper here.