Tag:  “unified patent court”  | (14) posts

UK inches towards UPC ratification

There was a sigh of relief at the end of November when the UK announced that it would proceed with the ratification process to implement the UPC in spite of Brexit.  This renewed the hope that the UPC will come in to force in 2017 as planned.  Whilst this was good news, what did it actually mean for the timescales and where is the UK currently in its legislative process to ratify the UPC?

In order to look forwards, it may be helpful to take a look back to see what the UK has already done to ratify the UPC.  They were, in fact, fairly advanced in the ratification process before the result of the EU referendum put a spanner in the works.

In May 2014, the UK Parliament passed the Intellectual Property Act 2014.  This Act amended the Patents Act 1977 by inserting new sections 88A and 88B in order to introduce the concept of the UPC into the legislation.  These new sections provided that the Secretary of State may make orders to give effect to the UPC Agreement and that such orders must be presented to both Houses of Parliament (the House of Commons and the House of Lords) for approval before they are passed. The UPC was also designated as an “International Organisation” under UK law which allows it to be granted certain privileges, immunities and exemptions if required.

Following on from this Act, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 was laid before Parliament in March 2016.  This order makes various amendments to the Patents Act 1977 in order to clarify the difference between a unitary patent and a European patent and applies and disapplies various provisions of the Patents Act 1977 (as appropriate) to unitary patents.  It is worth noting that this order was debated in the Houses of Parliament in March when confidence was still fairly high that the UK would remain in the EU.  Hansard (the record of parliamentary debates) shows that the House of Commons approved it in just 16 minutes and the House of Lords took only 24 minutes!

Since the UK’s announcement that it will continue to ratify the UPC Agreement, it has shown some progress by signing the Protocol on the Privileges and Immunities of the Unified Patent Court on 14 December 2016.  However, in order to implement this Protocol in the UK, it will need to lay a further order before Parliament for approval.  This order is currently being drafted but no draft has been published and there is no news on when it will be laid before Parliament.  I think what we can expect, when the time comes for the parliamentary debate, is that it will definitely not be as brief as it was for the last order.  What should be a fairly straight forward procedural approval may turn into a wider discussion on the UK’s role in the UPC, how it can function once the UK leaves the EU and whether the ratification should continue.

The UK also needs to deposit its instrument of ratification of the UPC Agreement with the General Secretariat of the Council of the European Union in order to formally ratify.  This will be prepared by the Foreign and Commonwealth Office but should be merely a formal step which will be done once the relevant secondary legislation has been passed.

There is still a lot of uncertainty surrounding Brexit, particularly with the ongoing Supreme Court appeal as to whether Parliament should be consulted before Article 50 is triggered.  The judgement is due this month and may give some clarity on the timing for Article 50.  As the UK is progressing with ratification of the UPC, membership is now likely to be one of the points of negotiation on departure from the EU.

Alicia Kim, Associate

Cautious optimism regarding 2017 UPC implementation

During the meeting of the EU Competitiveness Council on 28 November 2016 in Brussels, the UK Minister of State for Energy and Intellectual Property stated that the UK will proceed with their ratification process in the months to come.

The statement from the UK Minister for State and Intellectual Property Baroness Neville-Rolfe now seemingly paves the way for the UPC (Unified Patent Court) entering into force as soon as the second half of 2017, provided that Germany also ratifies in due course. However, there are still no official statements from either one of these countries when they actually expect to complete their ratification processes.

Voices were raised after the EU referendum on 23 June in favour of the UK ratifying the Agreement before filing the Article 50 declaration that sets in motion the process of leaving the EU, did so in view of the fact that the UPC is not an EU institution, but an international patent court and that the European Court of Justice (CJEU) will not deal with issues of substantive patent law. What will happen after the UK files the Article 50 is very uncertain, and concerns have also been raised that this might negatively influence how patent holders look at the UPC once it is operational. However, the intention of the UK administration appears to be, for as long as they are members of the EU, to play a full and active role in the UPC, according to Baroness Neville-Rolfe. She followed up by stating that “we will seek the best deal possible as we negotiate a new agreement with the European Union”. This statement might also be positive news with regards to European trademark and design rights.

In a statement made on 28 November, the UPC Preparatory Committee welcomes the news from the UK Minister. Since the UK vote to leave, the Preparatory Committee of the UPC has continued their efforts in recruiting judges and preparing the IT system for the entry into force of the UPC. Many countries have also moved forward with their preparations, for instance on 8 November it was announced on the UPC website that the Italian authorities had formally selected the location for the local division to be set up in Milan.

In an interview published on the website juve.de on 22 November, the chair of the UPC Preparatory Committee Alexander Ramsay also stated that the Brexit referendum more or less only posed a “speed bump” on the way to realizing the unitary patent protection and the UPC.

In addition, in a statement published on 29 November the EPO President Benoît Battistelli said:

“This important news from the UK government means that the long-awaited court is soon to be realized. Users, especially SMEs, have been waiting for the creation of a simpler patent system for Europe, and their relief is palpable. The way is now clear for the last few ratifications to take place in the coming months, and the new court to start work soon after. The UPC will provide a single forum for all participating states delivering faster enforcement actions and harmonized judicial decisions.”

The Preparatory Committee further fully acknowledges the uncertainty regarding the possible start of the system in their statement made on 28 November, and that the industry needs time to prepare for the new patent system. They will therefore publish a revised roadmap as soon as possible.

Provided that both UK and Germany ratify during the spring of 2017, businesses should be prepared for the entry into force during the autumn of next year.

Sofia Willquist, Partner – European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part III)

Strategies for pending patent applications and important aspects of the opt out procedure

When preparing for the entry into force of the new Patent system in Europe, also patent application which are now currently pending before the European Patent Organization (EPO) must be considered. A decision must be made whether to try to delay the proceedings to be able to request a European Patent with Unitary effect or to proceed to a granted European patent before this date. Of course, a pending patent application which is not foreseen to be granted before the entry into force, and which is not meant to be within the competence of the Unified Patent Court (UPC), may also be opted out, starting during the sunrise period.

Delaying the proceedings with the EPO can be done by requesting extensions of time limits, or if that’s no longer an option, by filing divisional applications. The filing of divisional applications, having slightly different scope of protection, could also be an important strategy for those applicants who wish to have it both ways, i.e. request Unitary Patent and have the patent validated nationally as today.

This means that both applicants and proprietors will have to consider the possibility of requesting opt out from the UPC, even before the Court opens. A strategy should be developed for the patent portfolio, at the latest during the fall of 2016, to be able to quickly file any such requests when the Registry of the UPC opens up. The request for opt out can be withdrawn, at any time unless national litigation proceedings have begun, but you may only request opt out and withdraw the request one time.

Requesting opt out might seem as an easy administrative task, especially since it is done online in the Case Management System of the UPC, and is not envisaged to incur any fees. However, the proprietor must keep in mind that it is only the entitled proprietor and all entitled proprietors that may file the request. Keeping track of who is the entitled proprietor in different states, is therefore essential, especially if you have multiple or different proprietors for your patents.

Sofia Willquist, European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part II)

The language regime for the Unitary Patent and the divisions of the UPC

As we have written before the creation and start of the Unified Patent Court will change the mindset of patent litigation in Europe fundamentally. However, Europe is a diverse continent, not the least when it comes to languages. With the European Patent Office (EPO), French, German and English have since long been established as language of proceedings, i.e. the language which the patent will be granted in. The language regime for the Unitary Patent should now also be considered. Within 1 month of the publication of the mention of grant the request for the Patent with Unitary effect must be filed.

If your patent is granted in English, a translation of the entire specification into any of the languages of the Contracting member states must also be filed at this time. If the patent is granted in French or German the translation must instead be filed in English. This translation should be man-made during a transitional period of 7 years, after which period this translation requirement will probably be abolished. The cost of preparing a translation should therefore be considered. As general advice, if the patent was originally filed in e.g. Danish, this text could be used for the translation. Otherwise if the text is only in English, a translation into German or French is probably the best alternative, as the patent claims will still have to be translated for the purpose of grant.

The language regime of the Unified Patent Court is also an important aspect, as for instance any actions for revocation must be filed in the language in which the patent was granted, and the claim must be filed with the central division of the Court. This means that if the patent was granted in German, a revocation action must be filed in German, even though it is filed with the Central Division in Paris or London. Infringement actions may be filed in the language of the specific division where the claim is filed. Hence, an infringement action filed with the Nordic Baltic regional division in Stockholm must be filed in English. Setting a strategy for the language of proceedings with the EPO (i.e. English, German or French) must be thus be done now, before filing any new patent applications.

Sofia Willquist, European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part I)

The creation and start of the Unified Patent Court will change the mindset of patent litigation in Europe fundamentally. The Preparatory Committee of the Unified Patent will, according to the Chairman Alexander Ramsay, be ready by the middle of 2016 with the preparations for the new Court.

In May the recruitment of judges began, and once the preparations are completed the so called “sunrise period” will start. The Agreement on the Patent with Unitary Effect, the Translation regime, and the Unified Patent Court will then enter into force, possibly already in the beginning of 2017 – and all applicants and proprietors therefore have to be readily prepared and have their strategies ready during the fall of 2016.
We will present in four parts some of the important factors and aspects to consider when preparing a strategy. Some other aspects that must be weighed in when preparing a strategy before the Unitary Patent and the UPC is existing or potential licensing agreements, different proprietors in different countries, if the patent has been involved in opposition proceedings etc.

Firstly it must be kept in mind that not all Contracting member states will be covered by the Unitary Effect from the start. At the moment (May 2016), only 10 countries have ratified the Unified Patent Court Agreement, and only those countries that have ratified at the time that your European patent is granted will be covered by the Unitary Patent. Since Great Britain and Germany will have to be among the 13 states to ratify the UPCA before it enters into force, which means that for the same cost for renewal fees for four countries today, your Unitary Patent will at least cover 13 states. This also means that your patents will be covered in the three Contracting Member states in which most validations of European patents are carried out today, which would still be a great advantage in terms of cost vs. coverage.

Sofia Willquist, European Patent Attorney

UPC getting closer – just a ”Brexit” referendum away?

When the UK prime minister David Cameron won the 2015 general election he, due to demands from his own Conservative MP party and other parties, promised to hold a referendum on whether Great Britain was to stay or exit the EU membership. This referendum will take place on 23 June, 2016.
A current poll by YouGov® EU referendum tracker (17 May, 2016) indicate that 44% of the voters wants to stay in the EU, 40 % wants to leave and 12% are still not certain about how to vote.

The UK has for a long time been one of the three Contracting Member states that most patentees decide to validate their patents in. They are as such a very important piece of the puzzle for the Agreements on a Patent with Unitary effect and the Unified patent court to be able to enter into force. If the UK decides to stay, their preparations for ratifying the Agreements have also come a long way. For instance, the Houses of Parliament have approved draft legislation to amend the UK Patents Act to give effect to the Agreements of the UPC and the Unitary Patent. They have also made amendments to the Patent Rules, which will come into force when the UPC agreement comes into force. It is thus very likely that the current time schedule of early 2017 will stand for the entry into force of the UPC. It is not likely that the ratification will be completed before the referendum.

However, if the UK decides to leave the EU, the UPC and Unitary Patent system cannot start until the UK no longer is a member of the EU, unless the UPC Agreements is amended. The reason for this is that a non-EU member state cannot hold a position in the UPC regime. Italy will take the UK’s place as one of the three mandatory states, since it was the fourth most popular country for validation in 2012 (“in the year preceding the year in which the signature of the Agreement takes place”).

Further, the central division of the UPC, which is set out to be placed in London, will likely have to relocate. This means that the UPC Agreement will have to be amended, and possibly ratified again by the Contracting member states that have already ratified. The language regime that stipulates that the central division proceedings, for instance revocation actions, shall be in the language of the patent is not likely to change, and about 70% of the cases will still be held in English.

The Lisbon Treaty (Article 50) governs the membership of the EU and it states that “Any member state may decide to withdraw from the Union in accordance with its own constitutional requirements.” However, a withdrawal from the EU is still a complex situation and any country desiring to leave will for instance have to negotiate with each of the other 27 states about the terms of departure, a process that can last for up to two years. The European council and the parliament in Strasbourg will then have to ratify the severance terms. In reality the “exit” may take more than two years.

With all of this taken into account, it is extremely difficult to predict when the UPC and the Patent with Unitary Effect may enter into force should we face a Brexit. In worst case, a delay of several years may be expected, unless a rapid re-negotiation and re-drafting of the current Agreements for the UPC and the Unitary Patent package can take place and be ratified accordingly.

Sofia Willquist, European Patent Attorney

Recruitment of Judges to the UPC during May

According to the Report of the 15th Preparatory Committee meeting of the Unified Patent Court (UPC), the recruitment of Judges will start during the beginning of May. [1]

The Court of First Instance will always have a multinational composition of the panel of judges. The panel shall comprise three judges, unless one of the parties requests that the President of the Court allocates an additional technically qualified judge from a pool of judges, in which case the panel is extended to four judges. The parties may also agree that the case is to be head by only one legally qualified judge. The panels will always be chaired by a legally qualified judge.

In the central division, i.e. Paris, London and Munich, any panel will consist of two legally qualified judges who are nationals of different Contracting Member (CM) states, and one technically qualified judge from the Pool of judges. (the “Pool”)

The local divisions expected to handle less than 50 cases annually, will have one legally qualified judge from the CM state where the local division is placed, and two legally qualified judges who are not nationals of that CM state. These judges will be allocated from the Pool of Judges. If the local division is expected to handle more than 50 cases annually, the panel will instead comprise two legally qualified judges who are nationals of that CM state, and one who is allocated from the Pool. That third judge will serve this local division on a long term basis in order to ensure an efficient functioning of the Court. If the Court is a regional division, two legally qualified judges will be selected from the CM states concern, and one from the Pool.

The technically qualified judge will always be selected by their experience in the relevant field of technology.

The judges now to be recruited shall ensure the highest standards of competence and proven experience in the field of patent litigation, and the legally qualified judges must have qualifications required for appointment to judicial offices in a CM state. The technically qualified judges must have a university degree and proven expertise in a field of technology, they must also have proven knowledge of civil law and procedure relevant to patent litigation.

The Pool will comprise all legally and technically qualified judges, who are full-time or part-time judges of the Court. There will be at least one technically qualified judge per field of technology. The allocation of judges from the Pool will be based on legal or technical skills, linguistic skills and relevant experience.

All judges to be recruited will receive proper training at a training facility set up in Budapest. The training framework will also focus on internships in national courts or divisions of the UPC, and improvement of linguistic skills, technical aspects of patent law. For the technically qualified judges the knowledge in civil procedure will of course be given a special focus.

Sofia Willquist, European Patent Attorney

a special focus.

Exclusive competence of the UPC – is it time to develop opt-out strategies?

The Agreement on a Unified Patent Court (UPCA), “the Court”, will enter into force four months after the 13th Contracting Member State has deposited its instrument of ratification. This date has been gradually moved forward from the beginning of January 2014. It is now anticipated for early 2017.
Immediately upon its entry into force of the Agreement, the Court will begin to settle disputes relating to European patents and European patents with unitary effect. A European patent is a patent granted under the provisions of the European Patent Convention (EPC) which does not benefit from unitary effect.

The UPCA thus automatically applies not only to the European patents with unitary effect, but also to all European patents which have not yet lapsed at the date of entry into force of the Agreement. The UPCA also applies to all European patents granted after that date, as well as to all European patent applications pending at that date or filed after it.

This means that even if you as a proprietor do not request unitary effect, your patent will still be within the exclusive competence of the new Court. Another important aspect worth considering is that the patents that have already been granted by the EPO will be also prosecuted before the new Court.

However, Articles 3 and 83 of the Agreement  offer relief to proprietors and applicants which do not wish to have their European patents brought before the new Court. During a transitional period of seven years after the entry into force of the UPCA, an action for infringement or revocation of a European patent may still be brought before a national court or other competent national authority.

This must be requested, by opting out from the exclusive competence of the Court, by notifying the Registry and paying the prescribed fee (currently EUR 80). The proprietor or applicant may, of course, withdraw their opt-out at any time unless national court proceedings have begun.

The opt-out will only take effect upon entry into the register. Patent portfolios should therefore be reviewed during the second half of 2016 in order to be properly prepared before the Agreement enters into force and to be able to quickly file a request to opt out.

It is ultimately up to the proprietors and applicants to decide on the patents, applications and SPCs for which they want to opt out. However, bearing in mind that the UPC is a new court, without any case law to rely upon, it might be anticipated that opt-outs will be requested for important patents and applications for which unitary effect will not be sought, at least until the case law from the Court develops.

It is now also possible that there will be a ‘sunrise period’ during which patent holders may file the opt-out request with the Registry before the Court opens by the signing of the Protocol to the UPC Agreement on October 1st 2015.

Sofia Willquist, European Patent Attorney

Unified Patent Court – one step closer to opening the Court

On October 1 2015, a Protocol to the UPC Agreement was signed by first seven member states [1]. It is open for signing by the remaining Signatory States of the UPC Agreement from this date.
The aim of the Protocol is to allow for some provisions of the UPC Agreement to be applied early, i.e. before the Court opens, in a provisional application phase. The Protocol will enter into force the day after 13 Signatory states (including Germany, France and the UK) have ratified the UPC Agreement.

This provisional application phase will allow for the recruitment of judges and testing of the IT system. Having judges appointed and trained at the date the Court opens is important, as it is conceivable that the Court could receive cases essentially on the first day the Agreement comes into effect.

Further to this, the protocol also allows for the Registry to be operational, which would possibly allow for patent holders to file their opt-out requests for European patents and also Supplementary Protection Certificates (SPC) before the Court opens, during a so called “sunrise period”.

The articles that would come into effect before the Agreement are thus mainly of an institutional character, Article 1-2, 4-5, 6(1), 7, 10-19, 35(1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court and Article 1-7(1), 7(5), 9-18, 20(1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court. Article 1 is related to Establishing the Unified Patent Court. Articles 15-19 are related to the appointment of Judges and Article 10 is related to the Registry [2].

Sofia Willquist, European Patent Attorney

Italy joins the unitary patent!

On 30 September 2015, Italy joined the unitary patent. Italy will thus form part of both the unitary patent and the Unified Patent Court (UPC) upon entry into force. So reports the Commission of the EU here.

Italy is the country in which the fourth largest number of European patents is validated. The Italian decision is therefore very good news for patent applicants with an interest in the Italian market, as the present requirement of a complete translation into Italian in order to validate a granted European patent in Italy will thus become obsolete upon entry into force of the unitary patent.

Hence, the unitary patent with its single procedure for the registration of patents in all participating countries has with Italy joining become even more attractive for small and large applicants alike.

The unitary patent and the UPC will enter into force simultaneously when at least 13 out of the 26 member states with Germany, France and the UK being mandatory have ratified the agreement. At the time of writing this a total of 8 of the member states have ratified the UPC, namely Denmark, Sweden, France, Austria, Belgium, Portugal, Malta and Luxembourg.

It is at present expected that the unitary patent and the UPC will enter into force by the end of 2016 or at latest in the beginning of 2017.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent