News from Abroad: Parliament Approves EU Unitary Patent Package - December 17, 2012

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

European Union (EU) FlagA unitary patent package covering 25 member states of the EU (Italy & Spain are not currently taking part) may finally be realised after approval of a new EU patent regime by the EU parliament.  In three separate voting sessions relating to a European unitary patent, a language regime and a unified patent court, Members of the European parliament (MEPs) approved the "EU patent package".

Long time in the making

Negotiations relating to agreement on a European unitary patent system have been on going for over 40 years with many false dawns including the rejection, by the ECJ, of a previous intergovernmental agreement proposal for a single European patent court.

The previous proposal was rejected by the ECJ who ruled that such a proposal was illegal under the EU Treaty and that only a unified patent system setup within the EU legislative framework would be legal.  The current package is by way of EU regulation for a unitary patent with the court system the result of intergovernmental agreement albeit with EU Commission support and blessing.  The package was achieved by way of the so-called "enhanced co-operation" procedure allowing a sub-set of member states to proceed with a project without the other member states under certain conditions.

On 29th June 2012 the European council agreed on the package but this was still to be approved by the European parliament.  The European parliament has now approved the unitary patent, the unitary patents court and an appropriate language regime.

Protection conferred by Unitary Patent

The unitary patent will provide automatic unitary patent protection in all 25 participating member states (Spain and Italy are not included) in a move said to be directed at cutting costs for EU companies and, hence, boosting competitiveness.  Of course, unitary patents and their enforcement via the unified court is available for non-EU applicants as well and it remains to be seen whether or not competitiveness of EU companies is boosted by the new arrangements.

Court Structure

The court will comprise a court of first instance, which in turn comprises local or regional divisions and a central division, and a court of appeal.

Each contracting state will have a local division but there will be a regional division if a common division is preferred.  The central division of the court of first instance will be based in Paris but with sub-divisions in London (dealing with Pharmaceutical, Chemical and Human Necessities subject-matter, IPC A & C) and Munich (dealing with Mechanical subject-matter, IPC F).  Paris will conduct proceedings relating to all other subject-matter.  The central division will have exclusive jurisdiction over revocation actions which are brought separately from infringement actions.

The unified patents court will have jurisdiction over all unitary patents established under the regulation.  Following a transitional period of 7 years, the unified patents court will have jurisdiction over all EP patents designating an EU member state a part of the unitary package.  The transitional period may be extended following a review of the workings of the new arrangements.  During the transitional period it is possible for a European patent to be "opted out" of the unified system, and indeed "opted in" if previously opted out.  However, requests to exercise an option must be received by the registry of the unified court prior to expiry of the transitional period.  In due course, patentees should give consideration as to which of their European patents they wish to be in or out of the system and make arrangements accordingly.

Local and regional divisions can choose whether or not to hear infringement and validity actions together, or to adopt a so-called bifurcated system in which validity is heard separately from the infringement action.  In a bifurcated system, the validity issues will be heard by way of a revocation action brought separately in the relevant central division.  If an infringement action is started after a revocation action has been brought in the central division then the revocation action may be moved to the court having conduct of the infringement proceedings.

The unified patents court will not have jurisdiction over national patents or national utility models.

How to obtain a Unitary Patent

Any applicant will be able to apply to the EPO for an EU unitary patent valid in all of the 25 member states taking part.  Applications are to be filed in English, French or German but can be made in another language if a translation is provided.  Patents will be made available in English, French and German.

Disputes

In case of a dispute, the patentee will have to provide a full translation of the patent in question in an official language of the member state in which the alleged infringement took place or the alleged infringer is domiciled.  Damages are likely to take into account that prior to being provided with a translation the alleged infringer may have acted in good faith and did not have reasonable grounds to know they were infringing the patent.  Whilst the jurisdictional issues are complex, they generally follow the Brussels regulation, and a general rule of thumb is that an infringement action can be brought before the court (local, regional or central) of the member state in which the infringement took place or where the defendant has their place of business within the EU.  Apparently, at the option of the plaintiff, non-EU defendants may be sued in the relevant central division.

Cost

Within the language regime, provisions have been made for translation costs to be reimbursed for EU-based SMEs, non-profit organisations, universities and public research organisations.  Renewal fees are also to be set at a level which takes into account the special needs of smaller organisations.

The cost of filing a unitary patent is not yet clear but is likely to be the same as validating in five or six countries under the current EPO regime.

Comment

The unitary patent will provide protection in 25 member states for the cost of a single patent application and a translation into two other languages.  Whilst this is beneficial to those organisations that validate in many member states, the benefit to organisations that validate in only two or three is not clear and this may be the case for many SMEs.

However, the EU parliament does appear to be taking steps to reduce costs for smaller organisations such as SMEs and non-profit organisations.  That said, until the cost of renewal or other official fees are released for the unitary patent, it is still not clear how SMEs and non-profit organisations are going to benefit.

Applicants should be asking themselves if the unitary benefits of the system outweigh the risk throughout its life of losing single European patent coverage by central revocation compared to the flexibility and partitioned risk of revocation through seeking national patents.

This report comes from European Patent Attorneys at WP Thompson & Co., 55 Drury Lane, London UK.  Further details and commentary can be obtained from Gill Smaggasgale, a partner at the firm.

 

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.