News from Abroad: EU Patent Is Finally Born

by McDonnell Boehnen Hulbert & Berghoff LLP
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    [author: Devanand Crease]

European Union (EU) FlagAfter a gestation period of nearly 40 years, and amid the Eurozone crisis, the final form of the unitary European Union (EU) patent and unified patent litigation system was brought in existence on 29 June 2012.  It was a troubled labour with much wrangling between the parent member states with some countries left out in the cold (Italy and Spain), and others obstinately digging their heels in and demanding concessions (United Kingdom).  In the end, a working system for the grant and enforcement of a unitary EU patent was agreed upon and some key highlights are:

• The system will likely come into force in 2014-15 and pre-grant and opposition procedure will be substantially similar to the current EPO patent process.

• After grant of the EU patent, the previous financially burdensome validation process has been removed with official languages only of English, French, and German.

• Whilst infringement proceedings can be brought in any member state in the first instance (except Italy and Spain), the primary technical court dealing with appeals and all issues of patent validity will be the so-called Central Division.  The Central Division will be headquartered in Paris, with specialist sections domiciled in London (for chemistry, including pharmaceuticals, and life sciences) and in Munich (for mechanical engineering).

• A single renewal fee will be paid covering the entire EU (except Spain and Italy).

The new EU Patent system will place patents on a similar footing with other pan-EU unitary IP rights such as trade marks and designs.  There are likely to be a few further hiccups ahead, though, as the new agreement must be ratified by at least 13 member states before becoming law across the EU (again excepting Italy and Spain).

The legislation has had many critics over the past few months, particularly those concerned that the German style of dividing infringement and validity proceedings into separate cases tried in separate courts (termed 'bifurcation') would become commonplace across all of Europe.  However, the classical EU compromise agreement that has been presented seems to mitigate some aspects of this, at least for the time-being.  However, simply defaulting to an EU patent at the earliest opportunity may not be the best situation for non-EU applicants as the benefits of enforcing a unitary right should also be weighed against the drawbacks of central revocation.

It is certain, though, that this new patent right will be a powerful game changer in the European market and its effects cannot be ignored.  The UK was particularly pleased with the outcome with its key life science industry benefitting from the location of the Central Division for chemical and life sciences litigation in London.  This is also of major interest to US and Canadian based pharma companies as the UK is the only major common-law nation in Europe.

The next few years may prove to be volatile as patent owners learn to deal with the new system and discover whether it delivers improved competitiveness on the global stage for the EU.

Dr. Crease is a Partner at Keltie LLP in London, UK.

EU Member StatesGraphic of member states of the European Union (above) by Ssolbergj, from the Wikipedia Commons under the Creative Commons license.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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