UNITARY PATENT
way. At grant, instead of choosing individual countries in which to validate, the applicant will request the EPO to grant a UP.
For a transitional period of 12 years, the request will need to be accompanied by a translation of the full specification. Reflecting the primacy of the English language, a European patent application prosecuted in German or French will be translated into English. A European patent
application
prosecuted in English will be translated into any official language of the EU. Tis translation of the complete specification is in addition to the usual requirement to translate the claims of the European patent into two languages on grant.
Te UP patent may, additionally, be validated in Spain and Italy individually, as at present, as well as in EPC countries which are not members of the EU.
Te UP will have effect across all 25 countries and renewal fees will be payable to the EPO. Currently, the EPO charges high annual maintenance fees to keep applications pending. It is likely that the level of renewal fees for the UP will also be high. Te UP can be transferred or licensed only for the entire region of member countries.
For proprietors who are resident, or have business premises, in one of the 25 countries, the national law of their base country will determine issues such as ownership. Where the proprietor is not based in one of the 25 countries, such formal matters will be determined by German law. Substantive matters such as patentability and infringement will be determined by the new regulation.
As the procedure for prosecuting the patent remains identical to that currently followed for obtaining a European patent, there can be no cost savings until grant. On grant, currently, many patents are validated in the UK, France, and Germany only. Te only formality required in those countries is to supply national patent offices with a local address for service. Potentially, therefore, the introduction of the UP will avoid the need to translate the patent, for example, into Bulgarian, Portuguese or Swedish when protection is required in those countries.
However, this slender advantage is offset by the language requirements of the UPC (described below), which mean that a UK company, for example, might find itself defending proceedings in any of those languages.
Furthermore, the proprietor of a European patent validated in several countries currently has the ability to reduce ongoing renewal costs by giving up protection in a number of countries. Tis is not an option with the inflexible UP.
“SOME COMPANIES HAVE MADE IT CLEAR THAT THEY ARE NOW FILING NATIONAL PATENT APPLICATIONS IN EUROPEAN
COUNTRIES AS WELL AS, OR IN PLACE OF, EUROPEAN PATENT APPLICATIONS.”
Te idea for a community patent has been around since the 1970s, but European industry seemed apathetic about its introduction then and it is equally difficult now to identify organisations which will wish to obtain UPs.
The UPC
To give effect to the proposed UP, a new court is to be set up. Tis court is to be given exclusive jurisdiction to hear all disputes relating to European patents and supplementary protection certificates (SPCs) relating to European patents. Tat is, European applications being filed now may have to be litigated in the UPC. However, the regulation provides a transitional period of seven years aſter commencement during which the proprietor of a European patent that is in force when these measures come into effect, can choose to litigate in national courts as at present. During
the seven-year transitional period,
proprietors may also file an opt-out for any pending applications. Tereaſter, all European patents will have to be litigated in the UPC.
Te structure of the new court is complex and it is not yet known who the judges will be. Te court of first instance will have a central division, and local and regional divisions. Te central division will work in the language of the patent, but the local and regional divisions may use local languages.
Te central division, which will generally hear validity issues, is based in Paris. However, there will be a section of the central division in London which will hear
cases about chemical and
pharmaceutical patents, and another section in Munich which will hear cases about engineering patents. Infringement actions are usually to be brought in the local or regional divisions.
It is possible, therefore, for infringement and validity to be heard in different courts and in
36 World Intellectual Property Review Annual 2013
different languages. Te validity of a French language pharmaceutical patent could be heard in French in the London court, for example, while the infringement trial might be conducted in Swedish in a Scandinavian regional court.
Practical implications
Te competence and cost of the UPC are not yet known. Tis, and the risk that infringement and validity issues might be decided by different courts and in different languages, is already persuading some businesses to avoid the UPC. In 2011 fewer European applications were filed than in the previous year, but there was a modest increase in the numbers of applications filed at the national patent offices of France, Germany and the UK.
Some companies have made it clear that they are now filing national patent applications in European countries as well as, or in place of, European patent applications.
It will still be possible to validate European applications being filed now in a selected number of European countries as, at present, it is not intended that the UP will be compulsory. As we have seen, proprietors can also opt that all of their European patents avoid the UPC, at least during the transitional period. Tis makes it
likely that businesses will continue to file European patent applications.
A UP is inherently inflexible, will be subject to high renewal fees, and will require use of the unproven UPC if any disputes arise. For these reasons it is hard to find a business reason for using the new regime.
Until March 2013, Jacqueline Needle was a partner with Beck Greener. She can be contacted at:
jacquelineneedle@gmail.com
Jacqueline Needle has wide experience of advising companies in the procurement and use of IP and this experience remains available to the firm on a consultancy basis. She has also conducted litigation in many countries.
www.worldipreview.com
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