Williams Powell

British and European Patent and Trade Mark Attorneys

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On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent Court.

The court will make it easier for businesses to protect their ideas and inventions from being illegally copied within Europe.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The UK government will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.  UK Law changes needed to give effect to the UPCA were passed by Parliament in March 2016. Ratification is handled by the UK Executive on behalf of the Crown.

The UPC is not an EU institution but an international patent court.  It is not, therefore, controlled by the EU institutions, save for its choice to have the European Court of Justice as the ultimate arbiter in disputes.  There is no reason why this choice could not be maintained even after the UK leaves the EU.

In this regard, the UPC has similarities with the European Patent Convention, which is also an institution set up under international law and is not an EU institution.  There are numerous member states of the EPC that are not EU member countries.

We welcome the UK government’s move to become one of the first European countries to press ahead with implementing the UPC, which is likely to become a very valuable tool for businesses across the world.

Should you like any preliminary advice on the UPC please do not hesitate to contact us.

When the EU parliament approved the Unitary Patent legislation in December 2012, some (including ourselves) optimistically said we may see Unitary Patents granted as early as the middle of 2014.  While implementation still appears to be well on track, we are still some way off - because of politics.

For the Unitary Patent system to come into force, the legislation must be ratified by thirteen member states (which must include UK, France and Germany).  As at February 2015, France, Austria, Belgium, Denmark and Sweden have ratified the legislation.  It is highly unlikely that the UK will ratify the legislation in 2015 as it is to hold a general election in May. 

More formal issues also still remain undecided - how much will the renewal fees be?  The aim for the Unitary Patent is for a single annual renewal to be payable covering all states.  In order to be attractive to SME's, the EU want the single renewal fee to be relatively low.  However, this will likely reduce the income of many member states and has therefore been a point of much debate. We understand discussions on this point continue between the European Patent Office, EPO, and member state governments.

We will keep you appraised of developments as they occur and would be happy to answer any questions.  Ultimately, when the Unitary Patent system finally comes into force any pending European patent application should be able to be converted into a Unitary Patent at grant so there is no reason or benefit in delaying filing. For pending European patent applications that are approaching grant, filing a divisional application would keep them pending and therefore leave open the opportunity of conversion to a Unitary Patent when the option finally becomes available.

 

On 16 Apr 2013, the Court of Justice of the European Union (CJEU) rejected challenges by Spain and Italy to the legislative process used to establish the unitary patent framework. 

Spain and Italy had attempted to block the creating of the unitary patent agreement, both by non-participation and legal challenge to the process used (typically EU law requires all member states to agree to legislation).  The argued among other things that the unitary patent agreement would undermine the internal market and that it would create a barrier to trade and distort competition to the detriment of businesses in their countries. 

Rejecting their challenges, the CJEU said that it cannot validly be maintained that the unitary patent agreement would damage the internal market or the economic, social and territorial cohesion of the Union. 

While there is significant political pressure to conclude the unitary patent agreement and the EU is unlikely to allow the process to be blocked, this is not the end of the line for the challenges. Two further actions for annulment have been lodged by Spain before the CJEU.

By a large majority, the EU Parliament today (11 December 2012) voted to approve legislation that enables implementation of the Unitary Patent and the Unified Patent Court.

Only in the EU could the legislation that finally brought to a conclusion some 40 years of debate, negotiation and compromise on the Unitary Patent be immediately followed in the same document by the “Implementation of the bilateral safeguard clause and the stabilisation mechanism for bananas of the EU-Central America association agreement”.

While not an absolute certainty (the legal challenges by Spain and Italy are still be to decided and additionally member states must ratify the legislation), EU politicians have now had their say and have cast their final votes.  In all likelihood we will be seeing Unitary Patents relatively soon.

Many have commented that the legislation has been rushed and is flawed.  There are certainly many areas that will require clarification in years to come.  The provisions on jurisdiction clearly open up a new era on forum shopping and could result in validity being heard in a court in a different country to that of infringement.  However, there are many positives, particularly to the SME and its budget:

  • Translations will (eventually) be no-more
  • Annual maintenance fees will be less than those that would currently be paid if all EP member states were validated
  • Infringement decisions will be enforceable in all member states without further activity
  • SMEs to benefit from reduced annual maintenance fees

The Unitary Patent System will be administered by the European Patent Office.  Examination will be subject to the same EPC provisions as currently apply.  However, at grant a European Patent can be registered as a “Patent with Unitary Effect” instead of being validated in national member states (the legislation explicitly state that a Unitary and a national patent should not be allowed).  It appears that existing European Patent applications that grant after the implementation date of the Unitary Patent may be registered on grant as Patents with Unitary effect. Therefore we could be seeing Patents with Unitary Effect being granted (and therefore available for use in commencing an infringement action) as soon as early 2014.

There are of course many questions:

  • Will Spain and Italy give up their objections and challenges and join the Unitary Patent System now the Advocate General has issued his opinion suggesting their legal challenges be rejected (and the likelihood of the Court of Justice of the EU agreeing))
  • Will the UKIPO and UK courts finally have to shift towards EPO practice on matters such as patentability of software related inventions?
  • Will the UK courts have to abandon their system of following precedent decisions or will the codified legal systems of France and Germany have to be compromised?
  • Will the EPO now have to take notice of decisions from a body (the Unified Patent Court) outside of the EPO (something it has traditionally been reluctant to do)?

As infringement actions must be brought before local courts or courts in the country in which the patentee has its place of business, will business in countries with lesser developed local court systems be disadvantaged?

One politician commented that the time has come for the politicians to hand over to those responsible for implementing the new systems.  More details will follow here as the implementation detail is released and flaws and issues become clear.