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In 1978 the European Patent Offi ce (EPO) opened for business. At that time there were proposals to provide a unitary Community patent, and the idea was also advanced of establishing a pan-European Court to deal with validity and infringement throughout Europe. T irty-four years later, the EPO has become a victim of its own success: to cope with the ever increasing number of patent applications being fi led, it is turning itself into an authority which refuses, rather than grants, patents. T e ideas for Community patents and unifi ed courts have rumbled along throughout the years, and every so oſt en various proposals seemed to be gaining support from all interested parties.

But in 2011, the Hungarian and Polish Presidencies, working with the Competitiveness Council of the EU, decided to ride roughshod over the views of experts in the fi eld. T e result is that we seem to have a version of the Community patent coming into force, which Italy and Spain will boycott. T ere are also proposals for a new Unifi ed Patents Court, which UK practitioners cannot support in their present form.

European patents

T e European patent is nothing to do with the EU. It was provided by the European Patent Convention (EPC) signed up to by the contracting states; there are currently 38 full members. T erefore, the EPC has more members than the 27 states which currently make up the EU. States in the EPC but outside the EU include Albania, Croatia, Switzerland and Turkey.

Under the system, a single patent application in French, German or English is fi led and prosecuted at the EPO. When granted, the resulting patent is, in fact, a number of national patents. In each country where the national patent comes into eff ect, annual renewal fees become payable to the national patent offi ce. Furthermore, any disputes about the patent have to be dealt with in either the national patent offi ce or the national courts. T ese disputes might be about the ownership or inventorship of a patent, for example, about licences and other agreements, or about infringement and validity.

When a European patent application is fi led, the applicant specifi es the member countries in which it can come into eff ect. Until recently, the applicant had to pay a fee for every country included and this led to many applications designating only a few of the possible countries. T ese days there is a single designation fee to be paid, so all recent applications designate all countries. However, costs arise on grant in every country in which the European patent comes into eff ect and, therefore, most granted European patents will be eff ective only in a small number of countries.

The Community patent

T e initial proposal for a Community Patent Convention (CPC) was developed at the same time as the EPC. It had similar provisions, but required that all of the Community countries be designated. Furthermore, on grant, it had eff ect across the Community but countries could, and did, require that a translation of the full text into their offi cial language be prepared and fi led. Not surprisingly, industry throughout Europe was not supportive of the idea, in view of the potentially huge translation costs that would arise on grant.

In 2011 a proposal for a European unifi ed patent with eff ect across the whole of the EU was approved by the European Commission (EC). It diff ers from the CPC in several ways, including preventing countries requiring a translation of the patent into their own language to be fi led on grant. T e unitary patent proposal has been presented to the member states on an ‘enhanced cooperation’ basis so that each country can decide whether, or not, to sign up. Italy and Spain are currently refusing to take part, primarily because there will be no requirement to provide the patent specifi cation in their languages, so currently the unitary patent will take eff ect in 25 of the 27 EU countries.

T e new unitary patent will be administered entirely by the EPO, which will examine the applications in the same way as European applications. However, the EPO will also remain responsible for the unitary patent aſt er grant and will collect renewal fees. T erefore, the system is potentially a revenue-enhancer for the EPO, to the detriment of national patent offi ces.

Having pushed the unitary patent proposal through, the EC noted that it would be unthinkable for the proposal to be brought to life without there being a court for enforcing and challenging the new unitary patents. So fresh impetus was given to the proposals for a Unifi ed Patent Court.

The location of the Unifi ed Patent Court

A choice has to be made as to the location of the Unifi ed Patent Court (UPC). Over the years the British and German patent professions have been by far the largest in Europe and they are repositories of enormous professional knowledge and skills. T e intellectual property (IP) courts of England and Wales have, arguably, the best IP judges throughout the EU, and in the UK we are able to bring cases from inception to trial in a year or less. Given that Germany already hosts the EPO, it would be fair for the central division of the UPC to be located in the UK. However, as many attorneys think that the proposals are fatally fl awed, and as the EC is not minded to take notice of criticism,

World Intellectual Property Review January/February 2012 31

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