Unitary Patent

Unitary Patent

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.

Overview

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. 

 

Update on the UPC System

The National Route versus the EPO Route

Strategy Considerations

With regard to the future European "unitary patent system", our partners Thomas Schachl and Michael Platzöder deal with the resulting strategic considerations.

 

Download Strategy Considerations


Legal Framework with official collection of texts

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.

 

1

Agreement on a Unified Patent Court and statute

 

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2

EU Regulation 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

 

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3

EU regulation 1260/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements

 

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4

UPC-Rules of Procedure (Draft)
- in English -

 

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5

Decision of the Select Committee of the Administrative council adopting the Rules relating to FEES for Unitary Patent Protection

 

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6

Decision of the Select Committee of the Administrative Council ADOPTING THE RULES relating to Unitary Patent Protection

 

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7

Decision of the Select Committee of the Administrative Council adopting the BUDGETARY and FINANCIAL RULES

 

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Starting date

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:

  • Deposit of at least 13 instrument of ratification or accession by participating EU Member States in accordance with art. 84 UPC
    Number of ratifications or accessions yet: 9 (as of February 2016)
  • France, Germany and the United Kingdom must be included among these 13 states.
    Still open for ratification or accession: Germany, UK (as of February 2016)
  • Date of entry into force is the first day of the 4th month after the above requirement are fulfilled.

Q & A

General aspects of the Unitary Patent System

1. What is the difference between the "European" Patent and the "Unitary" Patent?

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.

 

2. Which EU Member States are covered by the unitary protection of the Unitary Patent?

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.

 

Prosecution in the Unitary Patent System

3. Are there any changes in the pre-grant (application) phase for obtaining a Unitary Patent?

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.

 

4. How can the unitary effect be obtained?

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.

 

5. Is it possible to obtain patent protection based on a European Patent other than a Unitary Patent?

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.

 

Litigation in the Unitary Patent System

6. Is there a new court system being competent to hear Unified Patent cases?

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.

 

 

7. What is the structure of the Unified Patent Court (UPC) and where will it be located?

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.

 

8. What type of actions will be heard by the UPC?

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.

 

9. What is the transitional period about?

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.

10. What is the “opt-out”?

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.

 

11. What is the opt-in?

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.

 

12. Is it possible to request the opt-out at any time?

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.

 

13. Is the opt-out request limited to granted patents only?

No, the opt-out request may be filed for granted patents as well as for pending patent applications.

 

14. Is it possible to opt-out Unitary Patents?

No. There is no possibility to opt-out a European patent with unitary effect.

 

15. What is the language of proceedings before the Unified Patent Court (UPC)?

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.

 

16. Are there provisional measures available in the UPC System?

The following provisional measures (preliminary decisions of summary proceedings) may
be ordered by the UPC:

 

  • Preserving evidence and inspection of premises
  • Ordering a party to produce evidence
  • Ordering a party not to remove any assets
  • Ordering injunctions against an alleged infringer
  • Seizure or delivery up of products suspected of infringing a patent
  • Seizure of movable and immovable property of the alleged infringer, including the blocking of the bank accounts and of other assets of the alleged infringer

17. Is it possible to obtain ex parte interim measures (i.e. getting o court order without involving the defendant)?

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.

 

18. Is the UPC System a bifurcated system(i.e. patent infringement and validity of the patent are decided in separate court proceedings, as is the case in Germany) or may both infringement and validity be determined by the same di

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.

 

19. Will the UPC grant injunctions in case patent infringement is found?

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.