- Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) and the full transcript of the Trier public hearing (26 November 2014): (direct link) A version of this booklet incorporating the 18th draft of the Rules of Procedure of the Unified Patent Court will be available when this draft is approved and published by the Preparatory Committee, hopefully in September 2015.
The full transcript of the Trier public hearing (26 November 2014) is also available as a separate document here.
Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) (direct link here)
(A version of this booklet incorporating the full transcript of the Public Oral Hearing on the 17th draft of the Rules of Procedure of the Unified Patent Court held in Trier on 26 November 2014 will be available shortly.)
- The two judgments handed down on 5 May 2015 by the CJEU dismissing Spain’s actions against the EU regulations on the unitary patent protection:
Case C146/13 concerning Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection DE, EN, FR
Case C147/13 concerning Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements DE, EN, FR
Consultation Document on the Rules on Court fees and recoverable costs launched on 8 May 2015 by the Preparatory Committee Unified Patent Court (direct link here).
Law professors petition against the Unitary Patent Package – but are the arguments correct? Wouter Pors, Bird & Bird The Hague
A petition called “The Union cannot be stripped of its powers by the Member States: the dangerous precedent of the patent package”, signed by more than 40 law professors, retired law professors and lawyers was published on the IPKat blog on Friday 13 March 2015 (the petition may be read here). The timing of this petition is remarkable. One would have expected such a petition to be published around the time when the Council Decision authorising enhanced cooperation in the area of the creation of unitary patent protection of 10 March 2011 (2011/167/EU) was published, or maybe early 2013, when both the Unitary Patent Regulation, the Regulation on Translation Arrangements and the Unified Patent Court Agreement (UPCA) had become available to the public. Instead, it is published in between the Advocate-General’s opinion on the Spanish appeals against the two Regulations and the expected judgment of the Court of Justice of the European Union on those appeals.
Property and contractual aspects of Unitary Patents and of patents in the UPC system by Wouter Pors, Bird & Bird The Hague
Introduction The introduction of the Unitary Patent Package, consisting of the Unitary Patent (UP) and the Unified Patent Court (UPC) raises new issues with regard to patents as an object of property and with regard to contractual aspects of both Unitary Patents and traditional European patents. The law of property and contract law have not been harmonized throughout the European Union. Actually, there are big differences, especially between common law systems such as the United Kingdom and Ireland on the one hand and civil law systems on the other hand.
The Unitary Patent Package is not aiming at providing a solution for this. Actually, recital 6 of the Unitary Patent Regulation (UPR) provides: “As an object of property, a European patent with unitary effect should be dealt with in its entirety, and in all the participating Member States, as a national patent of the participating Member State determined in accordance with specific criteria such as the applicant’s residence, principal place of business or place of business.” This is then repeated in Article 7(1) UPR, followed by further details on how the place of business is determined.
Advocate General's Opinion recommends dismissal of Spain's actions against EU Regulations on Unitary Patent protection and translation arrangements and urges countries to ratify the UPC Agreement, by Audrey Horton & Wouter Pors, Bird & Bird
The European Union is on the threshold of a single patent for almost all of its Member States, the Unitary Patent, and an international court to enforce both such patents and traditional European patents, the Unified Patent Court (UPC). After many attempts to create a Community Patent failed, an increasing number of Member States joined forces to create the next best thing by way of an enhanced cooperation within the EU, which resulted in the plans for the Unitary Patent. This would be established through a Regulation of the European Parliament and the Council that would apply in the participating Member States, the Unitary Patent Regulation. In the end 24 Member States joined this Regulation, with the exception of Croatia (which will join later), Italy, Poland and Spain.
CJEU, Case Numbers C-146/13 and C-147/13 - Spain v Parliament and Council, Press Release No 152/14
The CJEU has issued a press release announcing that its Advocate General Yves Pot proposes that the Court should dismiss the actions brought by Spain and seeking annulment of the two regulations on the creation of unitary patent protection and on the applicable translation arrangements.
According to the Advocate General, the sole purpose of the regulation on the unitary patent protection is to incorporate recognition of unitary effect through a European patent already granted under the EPC. To that end the EU legislature limited itself to stating the nature, conditions for grant and effects of unitary protection, covering only the phase subsequent to the grant of the European patent without affecting the procedure regulated by the EPC. The protection conferred is regulated by the uniform implementation provisions of the regulation. The opinion, as far as it is summarized in the press release, does not address the problem that the EPO retains competence, outside the jurisdiction of the UPC, for European patents after grant including those with unitary effect, within the framework of opposition and limitation proceedings.
Unitary Patent and national law, by Dr. Tilman Müller-Stoy and Florian Paschold, Bardehle Pagenberg
With regard to unitary patents, national law often has to be applied to fill in the gaps the unitary patent regulation has left. If we take the EPO’s application figures since 2010 as a basis for the unitary patent, it can be predicted that German law will (partly) have to be applied to over 80% of all unitary patents in the future. Although the unitary patent will be an extremely important industrial property right in economic terms, there is much about it that is still unclear. Nevertheless, the exploitation of future unitary patents should be considered even now, as the substantive law governing the unitary patent as an object of property will already be determined with a present patent application.
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.
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.
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.
Patent reform - innovation, enforcement and the future of the single European patent, organized by Westminster Forum Projects
Tuesday, 30 April 2013, Central London
"Timed as the Intellectual Property Office takes forward ongoing measures in response to the Hargreaves Review of Intellectual Property and Growth - and as EU policymakers approach a finalised unitary patent system - this seminar will bring together key industry stakeholders and intellectual property lawyers to assess the future of the UK patent framework. Sessions will focus on the year ahead for patent policy at both domestic and international levels, and will assess how reforms could promote innovation and growth in the UK economy, as well as ensure effective enforcement mechanisms for rights holders."
Guests of Honour: Andrea Liesenfeld, Directorate-General for Internal Market and Services, European Commission; His Hon Judge Birss QC and speaker confirmed from the Intellectual Property Office (IPO)
"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)."
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."
New Article 5a of the Regulation on Unitary Patent Protection
(1) The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which the patent provides protection throughout the territories of the participating Member States in which the patent has unitary effect, subject to applicable limitations.
(2) The scope of this right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.
(3) The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 10.
(4) In the report referred to in Article 20(1) the Commission shall evaluate the functioning of the applicable limitations and, where necessary, shall make appropriate proposals.
New Recitals 9 and 10 of the Regulation on unitary patent protection
Read the entire set of proposed changes (in English) on the Dutch IP website www.ie-forum.nlhere.
"The Max-Planck-Institute for Intellectual Property and Competition Law, which has functioned as a politically and economically unbiased centre of legal competence for European intellectual property legislation ever since its foundation in 1966, is a well-recognized scientific commentator and advisor on the evolution of European patent law.
"The Institute considers a balanced, innovation-friendly and uniform patent system as being indispensable for Europe. However, the current patent package is deemed to be both dangerous and misguided. While a superficial glance may create the false impression of a patent law advancement through the proposal, it instead actually threatens to forestall the necessary legal progress and innovation capacities for the foreseeable future.
"The respective concerns of the Max-Planck-Institute are shared by experts throughout Europe. Likewise, considerable parts of the industry harbor doubts as to the proposed system's efficiency. Large undertakings might indeed benefit from a reinforcement of their patent portfolios through the proposed system. Particularly small and medium-sized enterprises are however likely to experience significant obstacles to their innovation activities.
"The criticism of the package is underpinned by a series of legal arguments which can be found here. Many of these points are also uncontested in the current debate. Yet remedies are only promised for the time after the entry into force of the package.
"Experience shows that particularly in relation to legislation for intellectual property this promise for subsequent improvement is unlikely to be delivered on. Consequently, it might prove disastrous to implement a patent system which is already known to be detrimental from both the legal as well as the innovation perspectives. Much rather, the correct course must be set now. Against this background, the Institute believes it is indispensable to reconsider the content of the Unitary Patent Package afresh."