Introduction to the Unitary Patent and Unified Patent Court

Jane Lambert

2 Feb 2016

What is the Unitary Patent?

• A “unitary patent” is a shorthand term for “a European patent with unitary effect.”

• A European patent is a patent granted by the EPO under the provisions of the EPC.

• At present European patents are granted for individual countries that are party to the EPC.

• A unitary patent will be a European patent granted for the territories of a number of EU member states as though they were a single country.

Which states will be covered?

• They will have to include France, Germany and the United Kingdom and at least 10 other EU Member States of the European Union.

• Austria, Belgium, Denmark, Finland, France, Luxembourg, Malta, Portugal and Sweden have ratified Agreement on a Unified Patent Court.

• Potentially, every EU member state can join.

• 25 of the 28 EU members signed the Agreement.

History of the Unitary Patent

• Community Patent Convention 1975.

• Agreement on a Community Patent 1989.

• Community Patent Regulation proposed 2000.

• European Patent Litigation Agreement proposed 2003.

• Council Regulation on European and EU Patent Court proposed 2009.

• Regulations 1257/2012 and 1260/2012 adopted.

• Agreement on Unitary Patent Court signed 2013.

Reg. 1257/2012

• Implements enhanced co-operation in the area of unitary patent protection and constitutes a “special agreement” within the meaning of art 143 of the EPC.

• Consists of 18 articles. • Art 3 provides that a European patent granted

with the same set of claims in respect of all the participating member states shall benefit from unitary effect in those States provided that its unitary effect has been registered in a Register for unitary patent protection.

Reg. 1257/2012

• Art 4 provides that a unitary patent shall take effect from the date of publication by the EPO of the mention of the grant in the European Patent Bulletin.

• Art 5 provides that the unitary patent shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating member states in which it has unitary effect, subject to applicable limitations.

Reg. 1257/2012

• Art 7 provides a defence of exhaustion of rights:

“The rights conferred by a unitary patent shall not extend to acts concerning a patented product which are carried out within the participating states after that product has been placed on the EU market by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialization of the product”.

Reg. 1257/2012

• Art 7 provides that as an object of property a unitary patent shall be treated as a national patent of the participating state in which, according to the European Patent Register, the applicant had his residence or principal place of business on the date of filing of the application for the European patent.

Reg. 1257/2012

The remaining articles provide for:

• Renewal fees

• C-operation between the Commission and the EPO

• Survival of EU competition law and the law of unfair competition

• Reporting the operation of the regulation

• Entry into force

Reg. 1760/2012

• This Regulation implements enhanced cooperation in unitary patent protection with regard to translation arrangements.

• No further translations are required if the specification of a unitary patent application is in English, French or German and the claims are translated into the other two languages.

Reg. 1760/2012

• If there is a dispute the patentee must provide on request at his or her own expense a translation of the patent into the language of the place where the patent is infringed or where the infringer is domiciled and a translation of the patent into the language of the court.

Reg. 1760/2012

• Natural persons, SME, universities, non-profit and public research organizations from countries where the official language is not English, French or German will be compensated for the cost of translating their applications into one of those languages.

What is the Unified Patent Court?

• A court for the settlement of disputes relating to unitary and other European patents that is common to the Contracting Member States and subject to the same obligations under EU law as any national court of those EU member states.

• The UPC is neither an EU institution nor a national court but a self-contained legal system consisting of a Court of Appeal and a Court of First Instance with its own substantive and procedural law.

What is the Unified Patent Court?

• A court for the settlement of disputes relating to unitary and other European patents that is common to the Contracting Member States and subject to the same obligations under EU law as any national court of those EU member states.

• The UPC is neither an EU institution nor a national court but a self-contained legal system consisting of a Court of Appeal and a Court of First Instance with its own substantive and procedural law.

UPC Agreement

• The UPC is established by art 1 of an Agreement on a Unified Patent Court (“the UPC Agreement”)

• Signed by all the member states of the EU except Croatia, Spain and Poland on 19 Feb 2013.

• The UPC Agreement consists of 89 articles and annexes a Statute of the Unified Patent Court and a table for the distribution of cases between the three sections of the Central Division of the Court of First Instance.

• Art 84 (4) provides that the UPC Agreement shall be open to accession by any EU member state.

Jurisdiction

Art 3 of the UPC Agreement provides that the agreement shall apply to any:

• European patent with unitary effect;

• Supplementary protection certificates issued for a product protected by unitary patents;

• European patents that have not lapsed; and

• European patent applications pending at the date of entry into force of the Agreement or filed after that date.

Jurisdiction

• For a transitional period of 7 years after the date of entry into force of the UPC Agreement, an action for infringement or for revocation of a European patent or supplementary protection certificate designating a member state may still be brought before national courts.

• During that transitional period a proprietor of or an applicant for a European patent or holder of a supplementary protection certificate may opt out from the exclusive competence of the UPC.

Jurisdiction

Subject to the right to opt out, the UPC will have jurisdiction over: (a) actions for actual or threatened infringements of unitary and other European patents and SPCs;

(b) actions for declarations of non-infringement of unitary and other European patents and SPCs;

(c) actions for provisional and protective measures and injunctions;

Jurisdiction

(d) actions for revocation and invalidity of unitary and other European patents and SPCs;

(e) counterclaims for revocation and invalidity of unitary and other European patents and SPCs;

(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;

(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;

Jurisdiction

(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and

(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.

Jurisdiction

Art 32 (2) of the UPC Agreement provides that national courts shall remain competent for actions relating to patents and SPCs which do not come within the exclusive competence of the UPC.

Structure of the Court

Art 6 (1) of the UPC Agreement provides that The UPC shall consist of a Court of First Instance, a Court of Appeal and a Registry.

Court of First Instance

Art 6 (1) of the UPC Agreement provides that The UPC shall consist of a Court of First Instance, a Court of Appeal and a Registry.

Court of First Instance

• The Court of First Instance shall comprise a central division as well as local and regional divisions.

• The central division shall have its seat in Paris, with sections in London and Munich.

• A local division may be set up in a Contracting Member State upon request.

• A regional division may be set up for 2 or more Contracting Member States on request.

Court of Appeal

• The Court of Appeal and Registry shall be located in Luxembourg.

• Appeals may be lodged against final and interim decisions of the Court of First Instance.

• Appeals against final decisions must be made within 2 months and appeals against interim decisions within 14 days.

Registry

• The Registry shall be located in Luxembourg.

• There will be sub-registries in each of the local and regional divisions.

Rules of Procedure

• Art 41 (2) provides for Rules of Procedure to be adopted by the Administrative Committee in accordance with the Statute after consultation with stakeholders and the Commission.

• The Preparatory Committee has prepared a comprehensive set of 382 rules which are now in their 18th draft.

Venue

• Infringement actions must be brought in the division where the infringement takes place or is threatened or where the defendant or one of them is located.

• Claims for declarations of non-infringement or revocation of a unitary or European patent must be brought in the central

• Counterclaims for revocation may be heard in the same case as the action for infringement or referred to the central division

Procedure

• Art 52 (1) of the UPC Agreement provides that proceedings before the Court shall consist of a written, an interim and an oral procedure.

• Written procedure equates roughly to the exchange of pleadings.

• Interim procedure equates to case management.

• Oral procedure consists of final submissions after the evidence has been adduced.

Further Information

Jane Lambert 4-5 Gray’s Inn Square London WC1R 5AH +44 (0)20 7404 5252 jlambert@4-5.co.uk http://nipclaw.blogpot.com Twitter @nipclaw