European patents with unitary effect - they are coming, only when and in what form? WR informs you in detail about the current status in the prosecution process, about contested patent proceedings before the new Unified Patent Court (UPC) and provides answers to your questions.
In these presentations, our partner Michael Platzoeder not only describes the current classic EP Patent System and the new Unitary Patent System. He also illustrates the key issues of the new system and comes up with strategic and practical conclusions.
With regard to the future European "unitary patent system", our partners Thomas Schachl, Philipp Neels and Michael Platzöder deal with the resulting strategic considerations.
This section provides the most important legal regulations, agreements and rules being relevant for enacting, implementing and executing the new Unitary Patent System. Some of the provisions are not finally agreed and are still in draft version.
There is no fixed starting date of entry into force of the UP system yet. Key requirements for the Unified Patent System for entering into force are:
The Unitary Patent is, formally speaking, a “European Patent with unitary effect”. This means that the application phase and the grant is/are the same as for the European Patent and implemented, as usual, by the
European Patent Office (EPO). Once the European Patent is granted, the applicant may choose to apply for the unitary effect resulting in a “European Patent with unitary effect” (Unitary Patent) for those EU states that are part of the agreement, at the time of choosing unitary protection.
The Unitary Patent covers all EU Member States which have ratified/acceded the related regulations at the time the patent is granted. Therefore, there will be at least 13 countries covered at the beginning, including Germany, France and the UK which must have ratified/acceded to launch the system. The Unitary Patent will eventually embrace all EU Member States that have ratified/acceded the related regulations. At the moment, a maximum coverage of 25 EU Member States can theoretically be reached. The geographical coverage of a Unitary Patent is 'frozen', once the patent is registered and will not be extended to those EU Member States that ratify the Agreement after the registration date.
There are no changes in the application phase. The application is to be filed for a European patent at the European Patent Office and is handled in accordance with the European Patent Convention until the patent is granted/refused.
After the grant of the European Patent, a request for obtaining the unitary effect may be filed, within one month from the publication of the mention of the grant in the European Patent Bulletin. The unitary effect will only become effective in EU Member States which have ratified/acceded the related regulations at this time. Importantly, this one request effects protection in all of those states, without the need to further validate the patent in any or all of these states.
The owner of a Unitary Patent can, in addition to the Unitary Protection, decide to have the patent validated as a “classic” European Patent in all non-participating states, namely (a) in all EU Member States which have not ratified/acceded the related regulations once the patent is granted and/or (b) in all non-EU-Member-States which cannot participate the Unitary Patent System, per se. Furthermore, it also possible to not request Unitary Protection at all and to validate all desired individual EPC member states (EU members and/or EU non-members) as known from the “classic” 'bundle patent' validation based on an EP Patent. However, it is not possible to request Unitary Protection and to validate nationally for an EU member that has ratified/acceded.
There will be a new, so called “Unified Patent Court” (UPC) having exclusive competence in respect of European patents with unitary effect. The UPC will also have competence over any patent validated as a “classic” European Patent, whenever the validation state is an EU member state that has ratified/ acceded to the agreement. In other words: it is not possible, to “escape” the UPC system simply by not requesting Unitary Protection but going the "classic" route of the 'bundle patent'. However, the jurisdiction of the UPC over “non-unitary” validated patents based on an EP patent is subject to exceptions during the transitional period. Mirroring the protective effect of the Unitary Protection, the rulings of the UPC will only have effect in the territory of the EU Member States having ratified/acceded the UPC Agreement at that time. The UPC has no competence with regard to “true” national patents, i.e. patents not validated based on an EP patent but directly filed with the respective national offices.
The UPC will consist of a Court of First Instance and a Court of Appeal. The Court of First Instance has different “divisions”. The UPC comprises local and regional divisions as well as a central division, the latter being split in three sections. The seat of the central division will be in Paris, with sections in Munich and London. As to “local” divisions, Germany, for example, will set up four local divisions, located in Munich, Duesseldorf, Mannheim and Hamburg. The Court of Appeal will have its seat in Luxembourg.
The UPC has exclusive competence to handle litigation and revocation cases on matters relating to European patents with unitary effect, validated national patents based on a classic European patent (being subject to exceptions during the transitional period), supplementary protection certificates issued for a product covered by such a patent and European patent applications. The competence includes patent infringement cases, actions for declaration of non-infringement, actions for provisional and protective measures and actions for revocation and counterclaims for revocation.
During a transitional period of seven years after the Unified Patent System enters into force (i.e. presumably starting by the end of 2016 or in the beginning of 2017), the patent proprietor of nationally validated patents based on the classic “bundle patent” system (“classic” European Patent ) may bring actions for infringement or for revocation of “classic” European Patents or of Supplementary Protection Certificate’s (SPC) before national courts or other competent national authorities, but also before the UPC. During this transitional period, the patent proprietor may also request to opt-out from the (parallel) jurisdiction of the Unified Patent Court (UPC). This opt-out will not only avoid the jurisdiction of the UPC for the transitional period, but will be effective for the whole life time of the “classic” European Patent. Depending on the acceptance of the UPC system, this transitional period may be prolonged up to a further seven years by the Administrative Committee.
From the day the Unified Patent System enters into force, “classic” European Patents are subject to the jurisdiction of the Unified Patent Court (UPC). For the duration of a transitional period of seven years, national courts also (in parallel) remain competent to hear such cases related to “classic” European Patents and it is the choice of the party initiating a court action, which venue to choose. The proprietor of a “classic” EP patent may therefore be faced with, for example, a nullity challenge before the central division of the UPC. However, during this transitional period, the patent proprietor may opt-out from the competence of the UPC, resulting in the consequence that only the national courts remain competent to hear any cases related to “classic” European Patents. This opt-out will avoid the jurisdiction of the UPC for the whole life time of the “classic” European Patent. Once the opt-out is registered, it takes effect for the entire European “bundle patent”, i.e. for all designated Member States in which this patent has been validated.
The regulations of the Unified Patent System do not use the term “Opt-in”, but use
the term “withdrawal from the opt-out”. This means that the patent proprietor may, at any time of the lifetime of a “classic” European patent, reverse the opt-out request and reactivate the competence of the UPC.
Importantly, the opt-out may not only be requested after the UPC system enters into force (i.e. during the transitional period of seven years after the start of the Unified Patent System) but may also be requested during a “sunrise-period”, which begins before the Unified Patent System enters into force and during the. While a request for opting-out filed during the sunrise period is always considered to be effective, a request filed after the Unified Patent System enters into force is considered as being ineffective in case there is/was already a court case pending with the UPC before the opt-out was registered in the patent register. In turn, the request for opting-in (withdrawal of the opt-out) is ineffective as well, in case there is/was a court case pending before a national court at the time the opt-in was requested.
No, the opt-out request may be filed for granted patents as well as for pending patent applications.
No. There is no possibility to opt-out a European patent with unitary effect.
The language of the Court of First Instance will be (one of) the official language(s) of the EU-Member State(s) hosting a local division or sharing a regional division. The language of proceedings before the central division is the language in which the patent was granted. The language of proceedings before the Court of Appeal is the language of proceedings before the Court of First Instance. The EU-Member States may also designate one or more of the official languages of the European Patent Office, in addition or instead of their official language as the language of proceedings of their local or regional division. Finally, if the parties agree to use the language of the patent, the Court of First Instance may designate using this language for the court case.
The following provisional measures (preliminary decisions of summary proceedings) may
be ordered by the UPC:
In case of risk of irreparable harm caused to the patent proprietor or risk of evidence being destroyed, the UPC may grant, at its own discretion, provisional and protective measures without hearing the defendant. The same applies if evidence is to be preserved or premises are to be inspected.
If an infringement action is brought before a local or regional division and a counterclaim for invalidity of the patent is filed before the same division, this division may (a) proceed both the infringement action and the counterclaim for invalidity together or may (b) alternatively refer the counterclaim for invalidity for decision to the central division and then to the discretion of the local or regional division (aa) either suspend or (bb) proceed with the infringement action. The general perception is that the courts will proceed according to option (a), for most cases.
The grant of an injunction is to the discretion of the court. Since the national law of most of the participating EU-Member States had provided the injunction order as a general rule and the denial of an injunction only as an exception, we expect the UPC courts to apply the injunction order more often than to refuse a related request.