The Unitary Patent Package - 1 year on...

March 2014

The 19th February 2014 saw the first anniversary of 25 EU Member States signing the Agreement on the creation of a Unified Patent Court.  The setting up of a specialised Unified Patent Court is the lynch pin in a package which will create the first patents with unitary effect in Europe. The unitary patent package consists of three elements: the unitary patent, a language regime, and the specialised Unified Patent Court.

What has happened since then, and are we any closer to a unitary patent for Europe?

Unified Patent Court (UPC) – the setting up of the UPC is essential for the unitary patent to come into effect. Since the Agreement on the UPC was signed, one country (Austria) has ratified, Malta has allegedly ratified, and France’s (one of the countries whose ratification is essential for the Agreement to come into effect) Assemblée Nationale has adopted a Bill which authorises ratification, which has also been promulgated by the French President. Deposit of the “Instrument of Ratification” at Brussels is the final step for ratification by France. Denmark has announced a referendum on the UPC for May 2014. Things have been quieter from the other 2 countries, UK and Germany, where ratification is essential for the UPC to come into effect. Although national ratification time tables have been speculated on to varying degrees, there is nothing concrete.

In January 2014, the Preparatory Committee issued an interpretive note on the interaction between national patent law and the operation of the UPC. They confirmed that for European patents or applications for a European patents that have been opted out of the UPC system, the UPC Agreement no longer applies. So, the competent national court would have to apply the applicable national law. This is likely to come as welcome news for patentees and applicants who want to avoid the untested new Court.

The Rules of Procedure of the UPC – these have under gone a detailed consultation process, and the 16th draft was published in March 2014 taking account of the consultation responses; this 16th draft is not intended to result in a further round of written comments, but is likely to spark debate.

Fees – Select Committee of Representatives of the 25 Member States participating in the unitary patent have been meeting to discuss fees. The Select Committee had met on 6 occasions by the end of 2013, however, there is no further news on the level of renewal fee for the unitary patent. The mechanism for how each national patent office participating in the unitary patent will received their share of fees, and what this is expected to be, is likely to cause further deliberation.

Brussels I Regulation – July 2013 saw the European Commission propose changes to the “Brussels I Regulation” to prepare the way for the UPC. The amendment to the Brussels I Regulation clarifies how jurisdictional rules will work in the context of the UPC. The proposal will need to be agreed by Member States and by the European Parliament before becoming law.

Challenges – In March 2013, after a previously failed attempt, Spain continued to challenge the Regulations underpinning the unitary patent system. In June 2013, the 2 cases Spain filed at the CJEU against the European Parliament and European Council were published but little has happened since then. Although this cast some uncertainty on UP at the time, developments and progress in other areas, such as the Rules of Procedure of the UPC, have continued undeterred.

So do we expect unitary patents before the end of 2014? In short; no. But we do expect to see continued progress and clarity on issues such as fees. Unitary patents in 2015 are probably unlikely, but 2016 might be a different story…

For more background on the unitary patent package, see here.

This update was prepared by Martyn Fish: mfish@hgf-law.com one of the partners of sister company HGF Law, Leeds http://www.hgf-law.com/contact.asp.  Tel:  +44(0) 113 233 0148

If you would like further advice on this or any other patent matter, please contact Martyn Fish at mfish@hgf-law.com  or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.