Wednesday, 19 November 2014

Opinions in legal challenges against the unitary patent available

The Advocate General has delivered opinions in Spain's two pending legal challenges against the unitary patent. 

The unitary patent is built on three main pillars: An agreement that creates a new judiciary to decide on infringement and validity for the whole of the EU. This agreement was agreed outside the EU, i.e., it is not an EU regulation.  Next there are changes in the regulations to the European Patent Convention so that the European Patent Office will grant unitary patents. Finally, there are two EU regulations that ensure that unitary patents have the same scope and effect in all EU member state.

This case is targeted against the last pillar. Spain wants to have these last two regulations, regulations 1257/2012 and 1260/2012, invalidated.

When a state brings a case to have a regulation invalidated, an Advocate General presents his opinion on the matter before the judges give their ruling. The Advocate General's opinion is not binding on the court. In both these cases judgment will be passed later. Often, though not always, the opinion of the Advocate General is followed though.  The opinions can be found here:  C-146/13 for regulation 1257/2012, and  C147-13 for regulation 1260/2012. A large number of translations are provided of these French texts, however at present I do not find an English translation.

Spain has offered 7 and 5 reasons respectively as to why the two regulations should be invalidated. In its two opinions the Advocate General considers each reason in turn and concludes that none of them are decisive. Most of the complaints seem rather formal in nature; arguing that the EU did not have the authority to make this regulation or that the regulation violates EU law. The arguments against 1260/2012 include the complaint that Spain is discriminated against on the basis of their language.

According to Spain, by endorsing the EPO patent system, the EU favors the official languages of the EPO, i.e. English, German and French. Anyone who has a different native language, say Spanish, is at a disadvantage when trying to obtain patent protection.

The Attorney General agrees with this point:

39.      Il ne fait aucun doute ici que les personnes qui ne connaissent pas les langues officielles de l’OEB sont discriminées et qu’un traitement différencié a ainsi été opéré par le législateur de l’Union.

Which I translate as:

There is no doubt here that people who do not know the official languages of the EPO are discriminated against and that the legislature of the Union has thus treated them differently.

Nevertheless, this should not lead to invalidation. The Attorney General notes that there is no absolute right using your own language in all circumstances. Furthermore, given the goal of reducing the costs of acquiring EU wide patent protection at low costs, the EU had no choice but to reduce the number of languages. In any case, according to the Attorney General, there can be no doubt that all researchers understand German, English, and French since the majority of scientific publications are in this language any way.

So, as far as the Attorney General is concerned there is no need to invalidate either one of these two regulations, so that the unitary patent can remain on track. Judgment is expected in 2015.

Wednesday, 3 September 2014

Last June a new draft version of the version of the 'Rules relating to unitary patent protection' has been adopted by EPO. I understand that the current version will be the same as the final version except for a small number of remaining issues. I've been looking at the nearly-definitive version and will start a series of posts noting thing that struck me.

The rules of last year had three alternative versions of the requirements for obtaining unitary effect. These options reflected the difficulty in interpretation the corresponding requirement from the EU regulation 1257/2012. According to article 3, the a "European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States (...) "

Should it matter if most participating member states have not yet ratified the unified patent court agreement, and thus no unitary effect would be available in those states? (Article 18(2)). And how about recent EU member states, such as Malta. Many EPO currently pending patent applications were filed before Malta joined EPO and thus cannot obtain the same claims for that state. Can those patents get unitary effect? I referred to this as the 'Malta problem'. And what should happen when Croatia (currently EPO and EU member but not a participating member state) decides to join the unitary patent system?

The current draft rules have made a choice in this respect. Rule 5(2) requires that "Unitary effect shall only be registered if the European patent has been granted with the same set of claims in respect of all the participating Member States.".   The notes to the rules further clarify that "unitary effect is registered only where the European patent has been granted with the same set of claims for all the 25 participating member states, irrespective of whether these States have ratified the UPC Agreement or not."

This means that all patent applications filed before 1 March 2007, i.e., before Malta joined the EPC will not be eligible for unitary effect, even if these patents are granted after the unitary system takes effect. It also means that once the Croatia joins the unitary system, any patent application 1 January 2008 is not eligible.

It would be impracticable if some patents which are eligible for unitary effect lose this status. In this respect, it would be easiest if Croatia joined the unitary system before the unitary system takes effect or after 2028, when all patent that could not designate Croatia have lapsed.  Perhaps, sooner is better than later in this regard.

Monday, 25 August 2014

EPO (nearly) adopts rules for unitary patent

EPO has announced in a Communiqué that the Select Committee of EPO has adopted 'in principle' the Draft Rules relating to Unitary Patent Protection. The communiqué does not link to a copy of the draft. However, a copy is hosted by Bristows

A full decision on the rules for the unitary patent could not yet be taken as no agreement was found on a number of topics. The communiqué only reveals that these topics concern 'some technical aspects' and a 'one rule relating to financial aspects'.

The  rule relating to financial aspects may refer to Rule 25. Rule 25 details who is going to pay for the unitary patent work of the EPO if the renewal fees don't cover it. Also the renewal fees will be further discussed in October.

Monday, 21 July 2014

Denmark joins unitary patent

Denmark has deposited its instrument of ratification with the Council of the European Union. 
That makes it the fifth state to fully ratify the Agreement on a Unified Patent Court. Previously, Austria, Belgium, France, and Sweden had also ratified the agreement.

The unitary patent system will become operation when 13 states including the United Kingdom, France, and Germany have ratified the agreement. At this point we can tell that a unitary patent (if it happens) will be valid at least in: Austria, Belgium, France, Sweden, Denmark, United Kingdom, and Germany.

Ratification of Denmark was uncertain for a while, as the country had to organize a referendum to clear to the way for ratification.

For some reason the ratification of Denmark has not appeared on the EU ratification page.

Monday, 14 July 2014

Is Hungary getting cold feet for unitary patent?

Although, Hungary has not yet ratified the critical Agreement on the Unified Patent Court, they were on course for it. Hungary has signed the agreement, is part of the EU unitary patent regulations, and will host one of the unified patent court's institutions, the Training Centre for Judges in Budapest. But now, Hungary apparently has some reservation about joining the unitary patent system, at least for just now.

Mr. Mihály Ficso, the Vice President for Legal Affairs of the IP office of Hungary, has given a presentation at the Premier Cercle's Unitary Patent & Unified Patent Court 2014. According to a report of Mark Richardson at Ipcopy, Hungary has a number of reservations:

- Ratification of Hungary will increase the number of valid patents in Hungary,
- Hungary may benefit from the unitary patent system without taking part in it,
- There are concerns about machine translations
- Renewal and court fees are not yet known

Mr. Ficso added that there is still a political will in Hungary to ratify the agreement. If I am not representing the Hungarian position fairly, I do apologize. Anybody who was actually at the presentation should feel free to correct me in the comments.

In part I can sympathize with the comments made by Mr. Ficso. All four reservations are true, yet I do not think they should block joining the unitary patent system.

The number of patent rights valid in Hungary will surely increase if the unitary patent is a success. This will hold for all participating countries though (perhaps excluding Germany). I'm not sure I agree with the underlying assumption that having a patent system that encourages not to protect your innovations would be an advantage for an economy.

Indeed, Hungary would benefit from the unitary patent system, even if it didn't take part in it. In fact the whole world will benefit from an improved European patent system. Also Hungarian companies could protect their innovation in a large part of Europe at low cost. Nevertheless, it would be even better for Hungarian companies if they could also protect their home market at the same time.

The concerns about machine translations are also valid. On the other hand, working with many languages is a reality of the patent profession. Machine translations have made life a lot easier. Although a human translation is (almost) always better, machine translations have advantages though. They are less costly, and are immediately available when needed. Should controversy arise, a human translation can always be made.

After the introduction of the London Agreement (of which Hungary is a member), translation requirements were greatly reduced. For example, a few years ago Hungary abolished the requirement that a full translation was needed. At present only the claims of a European patent need to be translation into Hungarian for validation.

As to the renewal fees. That we do not know their level is annoying. We only have Battistelli's enigmatic "They will be higher than many would hope, but lower than some might fear." On the other hand, Hungary takes part in the discussions regarding the level of these fees. If there are concerns as to their level, Hungary can influence the discussion.

I wish Mr. Ficso good luck in addressing these concerns, and I hope that in future I will be able to offer protection in Hungary to my clients as part of the unitary patent.

Monday, 7 July 2014

What happens to the Unitary patent if the UK exits the EU?

A commenter to a previous post on this blog asked the question: what if the UK would decide to leave the EU? 

The current British Prime Minister David Cameron promised a referendum to decide whether or not the United Kingdom should stay in the EU or exit it, the so-called brexit. The referendum would take place after the elections, somewhere in 2015.

Should an EU referendum really happen, than the outcome would be a gamble.  A referendum on the EU does not necessarily do well. I remember the 2005 referendum on a European Constitution in the Netherlands, for example. On the other hand, Denmark recently showed that an EU related referendum could work positive for the EU.

It is no question that should the UK leave the European Union that would be a great loss for the European economy.

Likewise, for the unitary patent, I would venture to say that a UK exit would be disastrous. That Spain and Italy, the fourth and fifth economy of the EU (by GDP according to Wikipedia), are not joining the unitary patent is bad enough. If the United Kingdom would be absent that would mean that a traditional minimal validation of the big three (Germany, France, United Kingdom) would no longer be covered by a unitary patent.

So it would be bad news for the unitary patent, if the UK would leave the EU. But could the unitary patent still enter into force?

I'm not sure if an UK exit would necessarily blow up the whole system. In fact, if the UK would stay in the EU, but not ratify the agreement, that would be worse, since that would imply that the unitary system would certainly not come into force. (Article 89 of the Agreement)

Below I'll assume for simplicity that an UK exit would be before the unitary patent system is in effect.

EU regulation 1257/2012

After an UK exit, the UK would no longer fall under the scope of article 3 of regulation 1257: A unitary patent would not have effect in the UK. Entry into force of the EU regulation only depends on the entry into force of the Agreement on a Unified Patent Court. The latter is determined by the Agreement, discussed below.

Note that even if the UK would leave the EU, the UK would continue to be a party to the European Patent Convention (EPC), thus one could obtain patent protection in the EU, through traditional national validation of a European patent.

Agreement on a Unified Patent Court

Entry into force of the agreement requires ratification of "the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place" (article 89 Agreement).  'Member states' refers to Member State of the European Union here. So this includes Spain and Italy, but after an exit would exclude the UK.

The question thus becomes which Member state had the highest number of European patents in effect in 2012, after Germany, and France (and the UK).  Google wouldn't give me the answer to that question unfortunately, but I would guess that it's the Netherlands. Although possibly, it could be Spain or Italy. (If it is Spain, the unitary patent is also out the window.)

The agreement is not EU legislation, but an international agreement made outside the EU. This is why Italy can join the unified patent court without joining the unitary patent. Nevertheless, I don't think the UK could still ratify this agreement, or continue to stay a member, if it were not a member state.

I couldn't find an explicit requirement for being a member state, but the Agreement seems to assume it throughout. For example, the agreement requires for signing that you are a member state. (Technically, this would not be a problem for the UK, as the UK have already signed the agreement.)

So I'll assume the UK would also leave this agreement in case of an EU exit. This would leave the Agreement in an odd state, as London is explicitly mentioned. Article 7 requires that there is a section of the central division in London. That would be difficult, if the United Kingdom weren't a member.


The unitary patent would lose a lot of luster if the UK drops out, but as far as I can tell, the unitary patent could still continue after an UK exit. Neither the regulation nor the agreement explicitly require that the UK participates.

The agreement may be salvaged as is, depending on which member state had that largest number of European patents in effect. Alternatively, these problems, as well as the reference to London,  may be resolved by amending the agreement. 

Friday, 4 July 2014

Belgium shows up on Ratification page

Belgium has shown up on the EU's ratification progress page for the unitary patent.  This bring the total number of countries that have fully completed the ratification page to 4: Austria, Belgium, France and Sweden.

The ratification law had passed the  House of Representative, on April 23, 2014. After that the King of Belgium needed to sign the law, and the instrument of  ratification needed to be deposited. That's all done now.

Wednesday, 25 June 2014

Public consultation on draft proposal for European Patent Litigation Certificate for European Patent Attorneys

The Legal Working Group of the Preparatory Committee finalised its proposals on the draft European Patent Litigation Certificate pdffor European Patent Attorneys and published this on 13 June 2014 for 6 weeks allowing users to make comments.

The draft proposals are accompanied by an Explanatory Memorandum pdfwhich further details the background.

The draft Rules on the European Patent litigation Certificate and other appropriate qualifications pursuant to Art. 48(2) of the Agreement on a Unified Patent Court include:
  • requirements for institutes that may issue the European Patent Litigation Certificate, and the required curriculum of the course to be accredited as a European Patent Litigation Course as well as requirements as to minimum course duration (120 hours; probably, contact hours - so a study load of in total at least 500-600 hours) and the examination (shall be written and oral examination);
  • permanent other appropriate qualifications:
    European Patent Attorneys having a bachelor or master degree in law according to relevant educational standards in a member State or an equivalent state exam in law of a member State of the EU.
    • The Memorandum clarifies that "Such diplomas provide EPAs with the necessary knowledge of private and procedural law, required to conduct patent litigation
  • other qualifications during a transitional period of three years from entry into force of the Agreement on a Unified Patent Court. The Memorandum clarifies that this Rule "introduces a transitional measure which takes in its points (a) and (b) into account that  specific courses  are  already  available  to  prepare  EPAs  to  patent  litigation  and that  in  some Member States patent attorneys are already authorized to represent parties before the  national courts in patent infringement cases."
    • (a) European Patent Attorneys having successfully completed a course from a proposed list of -now- seven courses deemed to be an appropriate qualification: two from CEIPI, one from FernUniversitat Hagen, one from Nottingham law school, one from Queen Mary College, one from Brunel University London, and one from Bournemouth Univsersity)
      • At first glance, the courses seem to range from very extensive (Patent or IP) Litigation courses of upto 1000 study hours or more to significantly less evolved courses on management of IP or IP certificates;
      • The list ends with "[...]", which appears to be an open invitation to propose more courses. I would expect that some courses leading to a national patent attorney qualification in a member State, where these courses include general law, private law, international private law, European Union law, Enforcement Directive, overview of infringement/ enforcement/ nullification proceedings in different Member States, and litigation practice will be proposed  and accorded to be added to the list;
      • The Memorandum clarifies that, "where appropriate, other courses preparing EPAs to patent litigation in a  satisfactory  way  may  be  added  to  this  list  before  the  entry  into  force  of  the  UPC Agreement, whether they be courses already existing at a national level in the Contracting Member  States  or  courses  created  or  updated  in  order  to  comply  with  the  Course’s requirements foreseen in the Draft EPLC decision and to be accredited as an EPLC Course after the entry into force of the UPC Agreement".
      • In view of the draft status, and with the draft being still open for consultation, it is not yet certain whether all seven courses will remain on the list, or whether some of them will be successfully challenged as appropriate;
    • or
    • (b) European Patent Attorneys having represented a party on his own without the assistance of a lawyer admitted to the relevant court in at least three patent infringement actions, initiated before a national court of a Contracting member State within the five years preceding the application for registration.
      • The Memorandum clarifies  that this clause "states  that  practical  experience  acquired  by  having  represented  a  party in three patent infringement actions initiated before a national court of a Contracting  Member State within the five preceding years is also recognised as appropriate qualification.  This sub-paragraph  focuses  on  recent  experience  acquired  as  a  representative  in  patent  infringement actions, in order to ensure that EPAs qualifying under this rule have acquired a  personal and up-to-date practice in areas such as orders to produce or preserve evidence,  provisional and protective measures, injunctions, counterclaims for revocation or evaluation of  damages.  In  this  respect,  experience  acquired  in  assisting  a  representative  or  in  other actions such as revocation of patents or appeals against decisions of patent offices is not sufficient to ensure that an EPA has developed a personal and adequate knowledge of case  management   in   all   areas   of   competence   of   the   UPC.   The   number   of   three   patent  infringement actions within five years takes into account that the amount of patent litigation  varies among the UPC Member States."

The consultation will close at midnight on Friday 25 July 2014. Comments must be sent electronically to This email address is being protected from spambots. You need JavaScript enabled to view it.

Tuesday, 17 June 2014

Status of unitary patent ratification

Before the unitary patent system can start, 13 countries need to ratify the agreement on a unified patent court; including Germany, France and the United Kingdom. With the recent ratification of Sweden the number of countries which fully completed the ratification is currently 3.

Below are all countries for which I know of serious ratification progress:

Ratification Completed


Serious ratification progress

United Kingdom

Announced plans for a division of the unified patent court 


Furthermore, I think we we can safely include Germany, and probably the Netherlands as likely candidates to ratify. That brings the total number of countries for which a ratification is sure or quite likely to 12 out of a needed 13. There are more than enough candidates for the 13th country.

Still, it would be nice if somebody would send me link for a further country working on ratification; I'd be happy to blog about it.

Monday, 16 June 2014

Sweden completes ratification of unitary patent

Sweden has deposited its instrument of ratification. The country is listed on the EU's Unitary patent – ratification progress page. Sweden had announced earlier that it will form a regional court together with Lithuania, Latvia and Estonia; sometimes called the Nordic court. Given these plans the quick ratification does not come as a surprise. I'd expect to hear news form Lithuania, Latvia and Estonia as well.
The ratification of Sweden brings the total number of countries that fully completed ratification to 3 out of a needed 13.

Monday, 2 June 2014

Expected timeline for unitary patent and unified patent court

I noticed that recently a progress report on the implementing of the unitary patent and unified patent court  has been filed with the Council of the European Union.

The document contains quite a number of expected dates for various milestones. I've created a rudimentary timeline by listing these dates in order. 

Both the EPO and the UPC have set up a committee to prepare these institutes: the Preparatory Committee for the unified patent court and the Select Committee for EPO.  I've also included a few dates from the updated timeline of the Select Committee.  These documents seem to agree well with each other.

This timeline does not include the ratifications of the member states, which are of course a requirement for the system to become operational.

Timeline 2014

Monday, 26 May 2014

Denmark votes in favor of unitary patent

In the Danish referendum last Sunday, Denmark has voted clearly in favor of the unitary patent.  The final results show that 60.45 percent voted for the unitary patent and the unified patent court, and 36.19 percent voted against. 

The full story is in the Danish newspaper Berlingske Tidende. Look for the words 'Enhedspatent' (unitary patent), 'patentdomstolen' (patent court) and 'ja' (yes).

Although it had previously been forecast that Denmark would vote in favor, supporters of the unitary patent court were nevertheless worried that the referendum could have resulted in a popularity contest for the current government. Apparently, they are not so popular. It seems votes against the new court came mainly from the Euro skeptic camp.

I wonder if this means that Denmark will try to join the Nordic regional court after all. Sweden, Lithuania, Latvia and Estonia have announced that they will from a regional division of the Unified Patent Court. Denmark now has the option to go alone, by establishing a local division or to join the Nordic court. As Denmark had been mentioned in this list before this referendum came up, I would guess that this option is now back on the table.

Wednesday, 21 May 2014

Possible solutions for the national prior rights problem in the unitary patent.

Yesterday, we found that national prior rights may surprisingly force the proprietor of a unitary patent to restrict his claims for all participating countries; not just for the country for which the national prior right is valid.

We consider three options the legislator could use to resolve this problem. We assume that this problem is considered serious enough to warrant solving and that the unitary regulations, agreement, and the EPC are not changed.

Allow conversion after revocation
Any state in which unitary patents are valid could introduce the possibility to convert a unitary patent to a national patent if the unitary patent is revoked in light of a national right.

Pro: This solution has a basis in the EPC. According to Article 135(1) and (2) EPC:
The central industrial property office of a designated Contracting State shall, at the request of (...) the proprietor of a European patent, apply the procedure for the grant of a national patent in the following circumstances: (...)   in such other cases as are provided for by the national law, in which the European patent application is (...) revoked under this Convention.

It seems that this solution would be fit in the existing legal framework without any problems.

Con: All participating member states should provide for this possibility in their national law. Furthermore, a proprietor who is in this situation has to apply for a national grant quickly and in many countries.

Allow partial revocation of a unitary patent
The rules of procedure for the UPC could be modified to allow a court to revoke a unitary patent in part. These rules are not final yet, so such modification can still be made.

Pro: For proprietors this solution would be easy. At the UPC claims can be defended specific for each country, depending on the national prior rights that may exist there. If the patent falls for some countries, infringement may still be found for the remaining countries.

Con: This solution would violate the unity of the unitary patent. According to regulation 1257, the unitary patent may only be revoked in respect of all the participating Member States.

Moreover, the proprietor cannot amend his claims differently for countries which have a prior right than for other countries. This would probably mean that he will lose a country with a prior right, since amending would mean losing scope in all other countries.

Declare a unitary patent non-enforceable for some countries
The rules of procedure for the UPC could be modified so that a court cannot revoke the unitary patent  for a national prior right, yet may declare the unitary prior right unenforceable in that country.

Pro: This solution does not seem to violate the literal wording of the regulations. Moreover, this problem can be fixed in one location (the UPC rules). This solution does not require action of the proprietor in all countries. 

Con: Although, I do not see which article this solution violates, it still seems to violate the spirit of the unitary patent. Moreover, it has the same problem as the previous solution: The proprietor cannot amend freely.

My guess would be that, if this problem is addressed, it will be according to the first solution.

Conversion has the advantage that is does not require any legal contortions. It provides the greatest security and freedom for patent holders. It also seems to be only solution in which the proprietor can salvage his patent for the countries with a prior right, without loosing scope in the other countries. It shifts the burden of solving this problem away from the EU and the UPC to national law though.

Tuesday, 20 May 2014

National prior rights against a unitary patent

One of the known problems with the unitary patent is its relation to national prior rights. We will explain this situation with an example.

For example, suppose company A files a national patent application NL1 disclosing an invention A only in the Netherlands. Later, company B files a European patent application EP1 at the EPO claiming A and A+B; no priority is claimed. NL1 is validly published by the Dutch patent office after B's filing.

Application NL1 is a national prior right against EP1. It is only valid for novelty.

What will happen to the European application of company B?

Monday, 12 May 2014

France shows up at EU Unitary ratification progress page

France is listed as ratified on the Unitary patent  ratification progress page of the EU. I take this to mean that France has completed the final step of depositing their instrument of ratification. After Austria, France is the second country to be listed as ratified by the EU.

I'm expecting Belgium, and Malta to show up on this page as well. But it hasn't happened yet.

Wednesday, 7 May 2014

EPO board issues a statement on the Unitary Patent and Unified Patent Court.

The Economic and Scientific Advisory Board (ESAB) of the EPO has issued a statement on the Unitary Patent and Unified Patent Court.

The statement is generally positive, and points out a number of advantages of the new system. According to the Board:

Benefits of the unitary patent include:
  • Administrative simplification of patenting in Europe, 
  • Potential for saving costs, including validation, translation, and post-grant administration costs, 
  • Geographic extension of patent protection. 
 Benefits of the unified patent court include:
  • Reduction in the high cost of enforcement for firms that validate in many or all member states
  • Developing harmonized and consistent jurisprudence throughout the territory of the member states

Concerns include
  • Unitary patent renewal fees and the costs related to litigation before the Unified Patent Court
  • Increased complexity due to the additional tier added to the patent system
  • Non-Practising Entities may become more active in Europe

The findings of the Board are based on a workshop they organized in December 2013, and a study they commissioned to Europe Economics.

Monday, 5 May 2014

Swedish parliament considering unitary patent bill

According to the Swedish patent and registration office, Swedish parliament are considering a bill to adopt the unitary patent system, including the unified patent court.  According to  Rachel Bateman of D Young & Co, the bill should also approve the regional court that Sweden is to form together with Lithuania, Latvia and Estonia (but without Denmark).

Thursday, 1 May 2014

Ratification law of unitary patent passes Belgium Parlement

Belgium parliament has accepted the ratification law for the unitary patent.

Last March the Belgium senate approved a "Wetsontwerp houdende instemming met de Overeenkomst betreffende het eengemaakt octrooigerecht, gedaan te Brussel op 19 februari 2013". (Proposal of law containing agreement with the Agreement on a Unified Patent Court, done at Brussels on February 19, 2013).

Now the law has also passed the House of Representative, on April 23, 2014. A few formal steps still need to be taken before we have full ratification. First, the law has to pass the symbolic stage of signing by the King of Belgium before going into effect. After that the instruments of ratification shall be deposited with the General Secretariat of the Council of the European Union.

We will be keeping an eye on the EU ratification progress to see when it shows up.

It may take some time though. Two month ago, we reported that Malta's Parliament appeared to have completed the ratification progress. But it seems that the ratification has not yet been posted to the EU.

Tuesday, 22 April 2014

Required subjects for the European Patent Litigation Certificate

As discussed earlier the Draft Proposal for Rules On The European Patent Litigation Certificate And Other Appropriate Qualifications that was published allows European patent attorneys to represent parties before the unified patent court if they have a European Patent Litigation Certificate.

Having such a certificate is not required to represent parties before the UPC. For one thing, you could be a lawyer. It would also be sufficient to have a law degree in addition to being a European patent attorney.

So presumably the certificate aims to teach patent attorneys those parts of a law degree that are needed to go before the court.

The draft contains a list of 8 topics that a course for the European patent litigation certificate should cover. Below I'll categorize the requirements and compare them with a typical law curriculum.   (I have done a law bachelor, so mainly I'll compare the certificate to what happened to be required at my University).

Friday, 18 April 2014

Country overview of the unitary patent system

Not all European countries are equal with respect to the unitary patent. This is one of the more confusing aspects of the unitary patent. Below is an overview of the all European countries and how they fit in the unitary patent system.

Wednesday, 16 April 2014

Representing parties at the UPC by European Patent Attorneys

The new unified patent court requires parties to be represented, either by lawyers or by European Patent Attorneys. Apart from having passed the EQE the patent attorneys need additional "appropriate qualifications". Those patent attorneys that are allowed to represent parties at the UPC are registered. (Article 48 of the agreement). 

What appropriate qualifications are has been a subject for debate for a while. The agreement only stipulates that having a "European Patent Litigation Certificate" would be one way to demonstrate the appropriate qualifications. Further rules will be set by the Administrative Committee of the unified patent court. 

Monday, 10 March 2014

No agreement on language in new draft Rules of Procedure for Unified Patent Court

The Preparatory Committee has released a new draft of the "Preliminary set of provisions for the Rules of Procedure (“Rules”) of the Unified Patent Court".  Along with the new draft, a 201 pages long digest was published. The digest details the comments received along with the changes made to the previous draft, if any, that were made in response. If anything they make clear that the committee has carefully considered all suggestions.

This 16th draft will be discussed later in 2014 at an oral hearing held by the Legal Group, which will also seek input of users on the amendments to the text.

Wednesday, 5 March 2014

First regional division of Unified Patent Court announced

The unified patent court agreement allows participating member states three choices: having no court at all, having a local court, or joining with other states and setting up a regional court. According to EU Commissioner Barnier, Sweden, Lithuania, Latvia and Estonia have announced that they will from a regional division of the Unified Patent Court (UPC).
For a while there have been rumors that a Nordic court was in the making. However, the plans of Denmark to hold a referendum on the question of they will participate in the unitary patent disturbed that. Apparently, Sweden and the Baltic states have decided not to wait for the outcome of the Danish referendum in May, and have gone ahead with their own plans.  I wonder what the position of Finland is. Will they they opt for a local court or wait to join up with Denmark should they join the unitary patent?

Tuesday, 4 March 2014

Amendment to Brussels I removes legal roadblock for unitary patent

If the unitary patent becomes a reality, there will be a new court: the Unified Patent Court (UPC). Currently,  recognition and enforcement of judgments in civil matters throughout the EU is regulated by the  “Brussels I Regulation”.  Judgments of the new UPC court should also be recognized among all EU member states, and thus Brussels I needed revision.

A proposal of the EU commission had been voted on by the European Parliament's legal affairs committee (JURI) two weeks ago. This cleared the way for formal approval. Both the Member States and the European Parliament need to approve the current proposal.

Today, 04.03.2014, the Council of the European Union has endorsed the amended text for the Brussels I regulation. 

Only the European Parliament has yet to approve it. Given the fact that their own commission was involved in reaching the text, this shouldn't be a problem. 

Apart from the 10 additional ratifications that are needed, this leaves only one potential legal roadblock for adoption of the unitary patent: Spain's legal challenges against the 'closer cooperation' used for the unitary patent regulations are still pending with the Court of Justice.

I understand from a press release of JURI that the Commission's text was amended. I was not able to find the text of the amended proposal. Should you know where to find it, drop me a line. 

Friday, 21 February 2014

France takes the next step in ratification of unitary patent

According to World IP Review the National Assembly has ratified the agreement on a unified patent court. President Hollande must now sign the agreement.

After signing, the ratification must then be registered with the Council of the European Union. At present only Austria has taken this final step. As reported earlier also Malta appears to have ratified the UPC. At present neither France nor Malta is listed as ratified on the EU ratification page.

On the website of the Assemblée nationale, I find the following text: Est autorisée la ratification de l’accord relatif à une juridiction unifiée du brevet (ensemble deux annexes), signé à Bruxelles, le 19 février 2013, et dont le texte est annexé à la présente loi.

 Which I translate into:

Tuesday, 11 February 2014

After the Malta problem, will we get the Croatia condition?

As discussed yesterday, EP patent applications filed before March 1, 2007 may not be eligible for Unitary effect. Croatia is another state that may cause the same problem. Croatia joined the EPC on January 1, 2008. Because Croatia joined the EU last year (2013), they are not currently signatories to the UPC agreement.

Monday, 10 February 2014

Malta to ratify Unitary patent agreement (?)

Last week at IIR's Unitary Patent Package conference, I heard the rumor that Malta has ratified the Agreement on a Unified Patent Court.

The ratification has not yet appeared on the EU website that tracks the unitary patent ratification progress. On the website of the Maltese Parliament, I can find what appears to be the minutes of 21 January 2014 (Sitting Number 110).

Monday, 27 January 2014

Will Denmark vote in favour of unitary patent?

As reported earlier, Denmark will hold a referendum to decide their participation in the unified patent court and unitary patent.

The decision is important for many reasons. Of course, Denmark would provide one more signature under the agreement, towards the goal of 13. So participation of Denmark makes the unitary patent more likely for all of us. More importantly, although Denmark may be one of the smaller EU countries it is nevertheless an important economy of the EU, the 11th in size. I consider part of the value of the future unitary patent to be its completeness. The ability to secure Europe with comparatively little overhead is definitely one of it selling point. It is already a pity that some countries are not joining, e.g., Spain, Poland, and Italy.

Moreover, there have been plans to create one large regional divisional of the unified patent court (UPC), that would serve the entire Nordic region.  Such a Nordic court could take infringement and revocation decision in first instance for Denmark, Sweden, Finland, and the Baltic states. If Denmark were to drop out, that would make this prospect much less appealing.

Having a single court that can decide on patent matters for most countries, instead of having expensive fragmented decisions, or the prospect of a more valuable European patent apparently appeals to the Danish population as well; According to a recent poll, the population of Denmark would vote in favor of joining the unitary patent.  If the referendum were held today, and not on May 25, 56% would vote in favor of the unitary patent. I'll keep my fingers crossed until then. 

See latest news: Denmark votes in favor of unitary patent

Monday, 6 January 2014

Dutch government expects unitary patent to reduce regulatory burden by 11.3 million euro

The Dutch government has published their autumn report on reducing 'regulatory burden'.  The report includes an annex containing the steps taken to reach the goal 2.5 billion worth of reduction. Among the 45 pages (!) listing many many measures, I was pleased to find one labeled 'Unitary patent protection'. Below is the Dutch description, taken from page 20:
25 Lidstaten van de EU voeren een ‘unitaire octrooibescherming’ in. Dit betekent dat bedrijven die in Europa een octrooi willen aanvragen dit niet meer in al die Lidstaten apart hoeven te doen, aangezien het mogelijk zal zijn om een EU octrooi in 25 EU landen tegelijk te valideren. Een octrooihouder die voor deze route kiest zal niet meer worden geconfronteerd met nationale administratieve verplichtingen en vertaaleisen. Dit scheelt veel bureaucratie en kosten, vooral vertaalkosten. 

Wanneer alle octrooihouders hiervan gebruik maken, nemen de aan validatie in Nederland verbonden administratieve lasten af met maximaal 11,3 mln. De aan validatie van een unitair octrooi verbonden administratieve lasten en vertaalkosten kunnen nu nog niet goed worden ingeschat, maar zullen vele malen geringer zijn dan de kosten die octrooihouders nu nog in alle landen waar bescherming wordt gezocht, moeten maken. Tegelijkertijd met de totstandkoming van een Europees octrooi wordt voorzien in een geschillenbeslechting op Europees niveau.

Below is an English translation (edited form Google Translate):