European Patent Package

by Ladas & Parry LLP

At the European Council meeting of June 28 - 29, the heads of government of the European Union reached agreement on what should be the last main issue delaying adoption of a “European Patent Package”.

It will be recalled that in 1975, soon after the European Patent Convention was signed, a further treaty, the Community Patent Convention, was also signed to create a unitary patent for the then European Community as an alternative to the bundle of patents resulting from the European Patent Convention. However, neither the Community Patent Convention, nor later proposals having the same objective have come into effect. There have been two main problems: one that of the language or languages to be used for the unitary patent; the other how to provide an efficient system for litigation of European patents. As outlined below, the European Council agreement addresses the second of these.

As to the language issue, two years ago, the European Commission proposed that, subject to some transitional provisions and other safeguards, the language requirements should be the same as for the European Patent, namely that the claims should be in English, French and German and the specification in English, French or German. Italy and Spain demurred. The remaining twenty-five EU members then sought and obtained permission to use a procedure for “enhanced cooperation” to implement a patent package excluding Italy and Spain. Italy and Spain have challenged this in court, but it is not expected that the challenge will succeed.

The “parent package” that now en route to adoption has three components:

1) a proposed EU regulation creating a unitary patent for the 25 cooperating EU countries;
2) a proposed EU regulation on the language to be used for the unitary patent; and
3) a separate treaty establishing a new European patent court system that will ultimately apply not only to the new unitary patent but also to all patents issued by the European Patent Office for countries that are members of the European Union.

It was the June 29 agreement on the latter that has opened the door to likely adoption of the entire package, although details of all three could change as they pass through the legislative steps required for final adoption.

In essence, the EU regulation on a unitary patent will provide that for patents prosecuted through the European Patent Office, in addition to the possibility of designating individual countries for protection, it will, at the applicant’s option, be possible to designate a unitary EU patent covering all of the 25 participating countries. The regulation will set out the substantive law provisions as to what constitutes infringement, possible defenses to infringement actions and the property aspects of such a patent. These are, however, essentially the same as those of the 1975 Community Patent Convention, which for the most part are already part of the national law in EU member countries.

The regulation on translation provides that the language requirements will, as noted above eventually be the same as the requirements of the European Patent Office, with a subsidy for applicants from EU member countries for which English, French or German are not a national language and who file applications in one of their own national languages. It is expected that machine translations will eventually avoid the need for human translation and the costs associated therewith. For a transitional period, of a maximum 12 years, those European patents that are to have unitary effect and are granted in French or German will need to be translated into English. The ones granted in English will need to be translated to another official language of the EU. These translations will be required until high-quality machine translation becomes available to ensure the accessibility of patent information.

The final instrument is the litigation treaty on which agreement has just been reached. This will ultimately become the only means for enforcing any patent granted by the EPO in a participating country. There will, however be a transition period during which applicants will be able to specify that they do not wish the new scheme to apply to the patent in question and that litigation on that patent continues to be before the national courts.

Under the new patent court structure, there will be a court of first instance and a patent appeals court. Although the appeals court will sit in Luxembourg, it will not be part of the European Court of Justice (ECJ). The court of first instance will have national/regional divisions and, following the June 29 decision, a three-branch central division. The country/regional divisions will be created on the basis of countries or groups of countries handling at least 50 patent infringement cases per year and will have jurisdiction over patent infringement and the ability to decide counterclaims in infringement actions challenging the validity of the patents in suit. Other challenges to validity will have to be brought before the central division. . Country/regional divisions will have the option of transferring any issues relating to validity to the central division.

As noted above, it has now been decided that the central division will have three branches. The official seat and location of the registry will be Paris and the first president of the court will be French. However, in view of the need for specialized expertise in some areas of technology, two branches will be created, one in London dealing with chemistry, including pharmaceuticals, inventions classified in IPC classification C, human necessities, and those in classification A, the other branch in Munich will deal with actions relating to mechanical engineering, classification F.

The June 29 agreement also provides that for actions to be brought to the central division, parties will have the choice to bring an infringement action before the central division if the defendant is domiciled outside the European Union. Furthermore if a revocation action is already pending before the central division, the patent holder will have the possibility to bring an infringement action to the central division. There will be no possibility for the defendant to request a transfer of an infringement case from a local division to the central division if the defendant is domiciled within the European Union.

The European Council also recommended deletion of provisions in the patent package that would give the ECJ jurisdiction over questions of substantive patent law. These provisions have been widely criticized by patent professionals in many countries who fear that the ECJ will have insufficient contact with patent cases to appreciate the nuances of cases that might be brought before it.

The two regulations will now be considered by the European Parliament and what is in effect a committee of the Council of the EU comprised of the ministers responsible or intellectual protection policy of the member countries prior to adoption. The treaty on litigation will be submitted to a diplomatic conference. It is hoped that the entire package will be adopted this year with a view to the package coming into effect next year.


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.

© Ladas & Parry LLP | Attorney Advertising

Written by:

Ladas & Parry LLP

Ladas & Parry 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.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

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.


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 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:

- 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.