News from Abroad: Unitary Patent & Unified Patent Court

by McDonnell Boehnen Hulbert & Berghoff LLP

European Union (EU) FlagLast week the pan-European Intellectual Property Summit (IP Summit) was held in Brussels and the first morning of the summit saw a number of discussions regarding the unitary patent and unified patent court.  A common theme that seemed to crop up from anyone representing the official EU position was that the proposed unitary patent protection (UPP) package isn't perfect but it'll do!  Hmm.

The opening keynote introduction was from Kerstin Jorna from the European Commission (Director, Intellectual Property – Internal Market & Services DG) who likened the UPP package to a cake that doesn't look like the picture in the recipe book when you remove it from the oven.  According to Ms Jorna, in such circumstances we should ask ourselves whether the cake is fit to be served to our family!  Apparently the UPP cake is fit to be eaten.  Please insert your own joke here about too many cooks in the kitchen . . . .

One other point to come out of the keynote session was that the European Commission intends to do everything in its power to grant the first unitary patent in Spring 2014.  Selection of the unitary patent would be made at the validation stage which means that the first unitary patent is probably already in the system somewhere.

The main session on the unitary patent and court threw up two main issues:  forum shopping in the unified patent court and the cost of maintenance fees for the unitary patent.

The maintenance fee issue was raised by the representative from Proctor & Gamble Europe.  P&G currently have a validation programme of between four and six contracting states.  They generally welcome the unitary patent proposals as it provides the option of enforcing their IP over a wider geographic area.  However, they raised the concern that the maintenance fee levels are currently unknown and these could have a big impact on whether the system is seen as financially viable.  They made the point that once a unitary patent is chosen there is no going back if the maintenance fee burden becomes too high.  Currently of course they have the option of dropping some of the validated states if they desire to prune country coverage.

A Dutch attorney later suggested that the proposed maintenance fee amounts being discussed would add approximately 50% to P&G's post-grant costs.  No basis was given for these figures.

Forum shopping was also raised as a concern by a number of people in the audience with one audience member suggesting that there might be a danger of some local divisions promoting a pro-patentee stance to get more cases coming their way.  If such local divisions were also associated with referring validity back to the Central Division, then this would make them potentially very attractive to patent rights holders looking to get a geographically significant injunction.

It was at this point that a representative from (I believe) the EPO suggested in the space of two minutes that (i) forum shopping from the point of view of efficiency and costs was healthy; (ii) forum shopping (in the manner suggested by the concerned audience members) would not take place, and; (iii) even if forum shopping developed, the Appeal Court would overturn matters so that the system would be self correcting!

This point of view was quite worrying.  Even if the Appeal Court did eventually overturn infringement decisions from the local division, it doesn't change the fact that until the patent is either shown to be invalid or the decision is overturned, a valid injunction is in place.  The other issue here is one of cost.  If the alleged infringer is forced to appeal the decision then this will add to their costs.

A point was made later in the session that under the system being developed the Appeal Court would be able to intervene and suspend the effect of an injunction if they felt it was wrong or the local division was issuing "crazy" decisions.  However, whether the Appeal Court would want to get involved that often is unknown.

A question was asked during the session on "Rules of Procedure for the Unified Patent Court" as to when we might expect to see the draft rules (apparently we are up to the 12th draft).  The answer, eventually, came that there would be a public consultation at some point next year (February onwards).

Mr. Richardson is a Director at Keltie in London, UK.

This article was reprinted with permission from the IPCopy blog.


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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