Thursday, 24 December 2015

Battistelli, "ready to deliver the unitary patent"

The European Patent Office (EPO) appears to have completed all rules surrounding the unitary patent. According to the EPO they formalized: implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states.

Benoît Battistelli president of the EPO said, "We are now legally, technically and operationally ready to deliver the unitary patent."

In the unitary patent system the EPO will be responsible for granting unitary patents. The granting of unitary patents is a new task that comes in addition to their present task of granting European patents. A key difference between the current European patents and unitary patents is that a European patent needs to be maintained separately for each country in which patent protection is desired, but a unitary patent has a fixed list of countries in which it is valid. The EPO will also administrate the unitary patent after its grant and collect and distribute the renewal fees for the unitary patent.

That the EPO's completed its preparations is of course good news for the unitary patent, but this was not one of the legal roadblocks. There still remains the necessity of national ratifications of the unified patent court; in particular the UK's and Germany's ratification.

Photo "Another Tough Puzzle, solved" by ToddonFlickr obtained via Flickr  under a  CC-By license

Friday, 13 November 2015

Hungary signs the protocol of the Unified Patent Court Agreement

Liberty Bridge, Budapest

Hungary has signed the  'Protocol on provisional application of the Unified Patent Court Agreement'.

As we reported, on October 1, 2015 seven participating member states signed a protocol to the Agreement on a Unified Patent Court.  The protocol is significant for users of the new system since it makes it possible to have a sunrise period for opt-outs. The protocol is also significant for countries who have to implement the Agreement, since it allows some organizational and institutional aspects to be in place before the Agreement itself is in full force. Hungary was not among the signatories.

I just found out though, that about a week later, on October 7, 2015, Hungary has signed the protocol after all.

Previously, there had been indications that Hungary was getting less enthusiastic about the unitary patent, and not so long ago, a critical article appeared on Lexology, urging the Hungarian goverment to postpone adoption of the regime. Signing of this protocol seems to indicate that Hungary is nevertheless committed to go ahead with the unified patent court and unitary patent.

One of the aspects of the agreement that may be in force before the rest of the agreement, is Article 19. This article states that there will be a  Training Centre for European patent judges in Budapest. The centre already opened, but perhaps signing the protocol may be useful for this centre in some way?

The full list of signatories to the protocol at present are: Germany, Denmark, France, United Kingdom, Hungary, Luxembourg, Sweden, and Slovenia. The Netherlands have declared that they will sign the protocol as soon as it gets parliamentary approval for the unified patent court, i.e., as soon as it ratifies.

Photo "Szabadság híd" by András Farkas obtained via Flickr  under a  CC-By license

Thursday, 12 November 2015

Finland taking steps towards ratification--contours of the first 13 becoming visible?

Helsinki Cathedral

A unitary patent working group of the Finnish government has recommended that Finland's Parliament ratify the Agreement on a Unified Patent Court.

At present 8 states have fully ratified the agreement: Austria, Belgium, Denmark, France, Luxembourg, Malta, Portugal, and Sweden. At least 13 countries are required before the unitary patent takes effect, but ratification is expected from at least 5 more countries, e.g.: The Netherlands, the United Kingdom, Germany, Italy, and Hungary. Perhaps, we may now also add Finland to the list of countries likely to ratify in the near future.  This means we are getting a better and better idea what the first list of participating member states might look like.

The Finish working group also made a proposal on amendments of the Finish patent law. Presumably, Finland will handle the ratification and amendment together, e.g., as is also being done now in the Netherlands.

The news did not include confirmation that Finland will not participate in the Nordic-Baltic regional division of the UPC. Last year, the Nordic-Baltic regional division was announced with Sweden, Lithuania, Latvia, and Estonia. According to the Finnish patent office, Finland is considering to set up a local division of its own, which would allow local patent disputes to be litigated in Finland rather than in Stockholm (Sweden).

The official report is here, which includes a brief English summary. English commentary from a Finish attorney can be found here.

Photo "Tuomiokirkko HDR" by Guyon Morée obtained via Flickr  under a  CC-By license

Thursday, 5 November 2015

Reading Material for Unitary Patent: Articles, Rules and drafts

Not much case law for UPC yet

As the unified patent court and the EPO are preparing for the start of the unitary patent, the amount of rules is increasing. At the moment, I count ten documents with articles and rules that will govern the unitary patent and unified patent court. In this post I'll try to make a comprehensive list of the primary sources on the unitary patent. 

EU level regulations

At the EU level there are two regulations. These regulation dating from 2012 establish among other things the unitary effect, applicable law, and translations agreements. Below I have also included the decision from 2011 that allowed is the unitary patent to proceed without Spain and Italy. (Although Italy has joined later after all.)

Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection.
The document is available at Eur-lex.
Status: final

Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.
The document is available at Eur-Lex.
Status: final

2011/167/EU: Council Decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection.
The document is available at Eur-Lex.
Status: final

Unified Patent Court

The unified patent court is established in the Agreement on a Unified Patent Court. This agreement between EU members has been signed by most of EU member states but is not yet fully ratified. The agreement established the unified patent court (UPC) and its competency. Detailed rules for procedures at the UPC are in a semi-final draft, but cannot be established before the court has been established. A proposal for court fees is available. Recently a protocol was created for the agreement which allows some provision of the agreement to enter into force before the rest of the agreement.

Agreement on a Unified Patent Court
The document is available at the website of the Council of the European Union.
Status: Ratified by 8 member states, awaits the ratification by 5 more states which must include Germany and the United Kingdom.

Preliminary set of provisions for the Rules of Procedure (“Rules”) of the Unified Patent Court
The document is available at the website of the unified patent court.
Status: 18th draft, Adopted by the Preparatory Committee on 19 October 2015. Must be adopted by the Administrative Committee of the UPC, which does not exist yet.

Rules on Court fees and recoverable costs
The document is available at the website of the unified patent court. 
Status: Draft (Consultation Document)

Protocol to the Agreement on a Unified Patent Court on provisional application
The document is available at the website of the unified patent court.
Status: Signed by 7 participating member states, does not enter into force until 13 States have informed the depositary that they have received parliamentary approval for the UPC


The legal basis for the unitary patent is found in the EPC (Articles 142-149a).

European Patent Convention
The document is available (pdf) at the website of the EPO.
Status: final

Draft Rules 1–24 relating to unitary patent protection
The document is available (pdf) at the documentation page at the EPO of the Select Committee
Status: Draft

Adjusted proposals for the level of renewal fees for European patents with unitary effect
The document can be found here. I do not have an official link.
Status: Draft? ('adopted in principle' by the Select Committee)

Photo "Leather Bound Books" by THOR obtained via Flickr  under a  CC-By license

Friday, 30 October 2015

18th draft of UPC Rules of Procedure published

The UPC Preparatory Committee has reached a major milestone with this draft

The new 18th draft of the rules of procedure of the Unified Patent Court has been published on the unified patent court website. The rules of procedure lay down the details of the proceedings before the UPC.

The 18th draft shows extensive revision of the 382 rules. Many of the changes are to improve readability and clarity of the rules, but many rules have received additional clauses and other substantive changes. A tracked changes version, comparing the current draft with the previous draft is available here.

This version of the rules of procedure should be pretty much the definitive version; the unified patent court website foreseeing changes when the court fees have been decided upon. Draft proposals for the court fees are available in draft form.

 The rules will be not be fully definitive until they are adopted by the Administrative Committee of the UPC. As the UPC has not been established, neither has its Administrative Committee. Although the recent Protocol to the UPC Agreement will establish the Administrative Committee early, even before the UPC becomes fully operative (if the protocol itself is adopted that is), Article 41 of the Agreement on a Unified Patent Court which governs the adoption of the rules of procedure is not among the parts which are to start early. This implies that one of the first things the UPC will have to do once established is to adopt these rules of procedure.

Photo "Celebrating" by Patrik Nygren obtained via Flickr  under a  CC-By-sa license

Monday, 19 October 2015

Is the UPC to provide strong harmonisation in ICT applications?

According to the twitter feed of Intellectual Property Magazine, Mr. G. Philpott of EPO said at the London IP summit: 'UPC to provide strong harmonisation in ICT applications that will play a dominant role in patent world'.

I wasn't at the IP summit, and haven't heard Mr. Philpott's statement myself. I don't know what the context of the statement is. I do believe however that the unified patent court will provide some long needed harmonization, at least in the longer term.

Before grant the unitary patent system will not change, including for ICT application. A unitary European patent like the current non-unitary European patents will be granted by the EPO in the same way. Until grant, the EPO does not know if a patent will continue after grant as a unitary patent or as a nationally validated patent. The substantive rules with which EPO grants or refuses a patent are identical for unitary patent and non-unitary patents. Only after the EPO decides to grant a patent can the applicant request unitary effect.

Neither the EU regulations for the unitary patent nor the Agreement on a unified patent court contain instructions on the EPO on what to grant or refuse.

So at least up to grant the unitary patent or unified patent court will not change anything with respect to current practice. At present the EPO will grant a patent for software but only if it represents a technical innovation (as with any European patent).

All patents that are granted by the EPO after the unitary patent systems takes effect, including unitary and non-unitary patents, fall under the competence of the unified patent court. During a transitional period a non-unitary patent can be opted-out from this but a unitary patent cannot.

The unified patent court is competent for all participating member states. If the UPC finds a patent invalid, it will revoke it for all states at once. If the UPC finds a patent infringed it can enforce the patent in all states at once. This is not the case at the moment. A national European judge in one country can revoke a patent, while a judge in the next country can consider it infringed. This is not a desirable situation: even if a patent has been revoked in one country the rest of Europe does not if it is free to operate or not. Certainly for the individual patent involved, the UPC will strongly unify the decisions that are taken with respect to that patent.

The unified patent court comprises a number of local and regional divisions as well as a central division. Harmonization between these courts comes from two factors. The judges in these courts are selected from a pool of judges and contain both judges of the same state as the division as well as non-nationals. Thus judges will have to cooperate with other judges from different legal traditions. Moreover, there is a single Court of Appeal whose case law is expected to become leading. Of course, this harmonization between the courts will take time. For one thing, it will probably take a few years until the first cases have reached the Court of Appeal and are decided there.

The lack of harmonization has been complained about by judges themselves. For example, Lord
Justice Jacob had suggested Aerotel/Macrossan  to refer questions regarding the patentability of computer implemented inventions to the EPO Enlarged Board. This suggestion later led to opinion G 3/08, in which the Enlarged Board found that the EPO currently has a consistent way to examine computer implemented inventions.

No-one can say what the case law of the Court of Appeal will look like. Whether it will be dominant in the world or not is hard to say. But a case law unifying the three largest patent countries in Europe will for sure gain in importance.

Photo "Part of dead rail way thailand only" by yotananchankheaw obtained via Plixs under  Public Domain CC0 1.0 license (no changes made).

Friday, 2 October 2015

Sunrise period for opt-outs in the making

Sunrise period for unitary patent in the making

The new unified patent court will be competent for European patents with and without unitary effect. Also existing patents and patent applications are included. This means that a central revocation is possible the moment the UPC becomes into effect.

If you don't want the UPC to apply to your patent, at least for the coming years, you can file an opt-out. The problem is that the opt-out only takes effect upon its entry into the register of the unified patent court: No unified patent court, no register, no opt-outs. If thousands of opt-outs are filed on day one, it may take a while before they shows up in the register. In the meantime an action may have been brought against you.

Yesterday a new Protocol to the UPC Agreement has been signed by the first 7 participating member states, which may solve this problem. 

The protocol allows some parts of the Agreement on a Unified part court to come into effect before the Agreement itself has done so. Most of the articles that would come into effect before the full Agreement are of an institutional nature, for example: Article 1: Establishing the Unified Patent Court; Articles 15-19: Appointment of Judges; Article 36-39: Budget and Financing. As the Unified patent court should receive cases starting at the first day the Agreement comes into effect, having appointed judges before that is probably a sensible idea.

Among the articles of the Agreement that are to come into effect early is also Article 10: the Registry. Thus this protocol makes it possible to have a sunrise period for opt-outs. The unified court confirms that early registration of opt-out demands will be possible.

The  protocol was signed yesterday October 1st 2015, in the sidelines of an EU Competitiveness Council meeting. 

The Minister of the Economy and Foreign Trade of Luxembourg, Mr. E. Schneider at the signing ceremony

For those who are interested, more pictures and videos of the signing ceremony are available at the European Council website.

The protocol is not in effect yet, and in fact the requirements for the protocol to become in effect look rather similar to the requirements for the agreement itself. The Protocol enters into force the day after 13 Signatory States of the Agreement on a Unified Patent Court including Germany, France and the United Kingdom, have signed the protocol and have either ratified, or informed the depositary that they have received parliamentary approval to ratify, the Agreement on a Unified Patent Court. The underlined condition is different from the condition for the Agreement.

This means that the protocol will not be effective until the full Agreement is very near indeed.The required number of states for the Agreement must have given parliamentary approval, though they need not yet have deposited the ratification. Apart from that, also the protocol needs 13 signatures ; Only 7 signatures have been collected for the protocol as of yet.

Photo "Orange sunrise" by Wyncliffe obtained via Flickr under a CC Public Domain License (no changes made). Photo of Mr. Schneider from the European Union 

EU accepts Italy in the Unitary Patent

Four years ago when the negotiations about the unitary patent where still ongoing, the EU authorized 'enhanced cooperation'. The unitary patent could proceed without Italy and Spain. Now four years and a couple of court cases later, it seems that the unitary patent is really about to happen.

About 2 month ago Italy asked if it could join the enhanced cooperation after all (we reported earlier).  This request was granted today. The step is not totally unexpected though as the EU has only limited grounds on which such a request could be denied.

This means that Italy is now the 26th member of the enhanced cooperation on the Unitary Patent protection. Note that Italy still needs to ratify the Agreement on a Unified Patent court, just like most of the other participating member states.

The joining of Italy in the enhanced cooperation puts a definite end to the ambivalent position Italy had in the system: Italy was not part of the enhanced cooperation--so that unitary patent would not be valid in Italy. Yet Italy had signed the Agreement on a Unified Patent Court so that after ratification it would have a court competent to judge on unitary patents. If Italy now ratifies the Agreement, unitary patents will be valid in Italy and a local Italian court can judge on those patents.

At present only Spain and Croatia do not participate in the enhanced cooperation. In case of Spain this is by design. They were not part of the enhanced cooperation from the beginning. In case of Croatia this is because they joined the EU after the enhanced cooperation was started.

Both Spain and Croatia are free to follow the example of Italy and can still join the enhanced cooperation. In case of Croatia this would mean that some pending patent applications will lose their eligibility for unitary patent protection. (What I've called the Croatia condition.) To maximize the legal confusion, Croatia should join within a few years after the unitary patent system has started. 

The Commission is calling 'on all remaining participating Member States to ratify the Unified Patent Court Agreement as soon as possible so that the Unitary Patent package comes into force by the end of 2016'.

Photo "Pasta2" by Clare Bell obtained via Flickr under CC BY 2.0 license (no changes made).

Monday, 14 September 2015

New Draft Rules for European Patent Litigation Certificate publised

Will graduation for the European Patent Litigation Certificate look like this?

 The Preparatory Committee has agreed on a new draft for the Rules on the European Patent Litigation Certificate and other appropriate qualifications. The new draft is available on the website of the unified patent court. Also an Explanatory memorandum is published.

The Unified patent court allows parties to be represented by European Patent Attorneys instead of lawyers. The attorney either needs to pass an exam and get the European Patent Litigation Certificate or he must have other qualifications. The European Patent Litigation Certificate ensures that the attorney has knowledge of the rules of procedure of the UPC, relevant law, and advocacy skills. The other qualifications include experience and grandfather rules for existing certificates.

We have discussed a previous draft of the rules before (e.g., here and here). Compared to the draft that we discussed previously, I found the following changes are noteworthy:

An institute that can issue the certificate no longer needs to be established in a contracting member state. It is sufficient to be established in a member state of the European union. This means that, e.g., a university in Spain could start a course to get the certificate. The course may be given in a language of a non-contracting state, e.g., Spanish.

The 'grace period' for existing institutes has been reduced from 3 years to 1 year (see below). Allowing institutes form non-contracting states may become important for this reason. Otherwise, a country that is a bit late with ratifying the agreement could jeopardize the accreditation of its institutes.

The new rules also extend the allowable institutes from universities and non-profit educational bodies of higher education to non-profit educational bodies of professional education.

Advocacy skills has been included in the required subjects of the course. The rules have clarified that the required duration of 120 hours are for lectures and practical training (and not for homework).

The list of existing qualifications that will be allowed has been extended. On the other hand, as noted above, the period in which these qualifications are sufficient has been shortened from 3 to 1 year. This means that these institutes should work on getting their accreditation done before the end of one year from the entry into force of the Agreement on a Unified Patent Court.

The new list is as follows (rule 12(a)):

 (i)    Centre d’Études Internationales de la Propriété Intellectuelle, courses leading to the Diploma on Patent litigation in Europe or to the Diploma of international studies in industrial property (specialized in patents);
(ii)    FernUniversität in Hagen, course "Law for Patent Attorneys” and its predecessor, the course “Kandidatenkurs Fischbachau”;
(iii)    Humboldt-Universität zu Berlin, course “Zusatzstudium Gewerblicher Rechtsschutz“;
(iv)    Nottingham Law School, course “Intellectual Property Litigation and Advocacy”;
(v)    Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
(vi)    Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”;
(vii)    Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”;
(viii)    Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;
(ix)    Stichting Beroepsopleiding Octrooigemachtigden, course “Beroepsopleiding Octrooigemachtigden”;
(x)    Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
(xi)    University of Milano, course “Corso di Perfezionamento in Brevettistica”;
(xii)    University of Warsaw, course “Podyplomowe Studium Prawa Wlasnosci Przemystowej”;

A notable one is number (ix). This course is currently required to become a Dutch Patent Attorney. As a consequence national Dutch Patent Attorney who graduated the course will be grandfathered into the system. (I understand that some of the other courses are also required to become a national attorney for the respective state. Can anyone fill me in, in the comments?)

Experience in judging patent cases has been included as sufficient qualification.

Photo Zajdowic, used under Content License. Photo was not changed.’s Member Name.”’s Member Name.”

Tuesday, 8 September 2015

Unitary patent ratification map

On September 17, I'll participate in a live webcast on the topic of 'Post-Grant Patent Opposition in Europe and the U.S.' organized by the Knowledge Group. I'll explain the new possibilities for patent invalidation offered by the Unified Patent court and give my view on how the UPC may change opposition before the EPO.

I made the graphic above to explain the current ratification status of the Unified Patent Court. In the map of Europe above, all European countries are colored.

On the negative side are the Red and Brown states. The brown states are EPO members but not EU members. They can never ratify the agreement (unless they become an EU member). The red states (Spain, Poland, and Croatia) are countries that at present will not ratify the Agreement on a Unified patent court; either because they are not included in the enhanced cooperation or have given indications that they will not ratify (Poland).

On the positive side are the gold and green states. The dark green states have ratified the agreement. Note that Portugal recently joined the green states. The light green states can ratify, but at as of yet have not. I've colored Italy as a light green state, although technically they are not in the enhanced cooperation yet. After Italy's request to join the enhanced cooperation, this is only a matter of time.

Finally, the gold states (United Kingdom and Germany) are the two states whose ratification is required before the UPC can start. Recently, the United Kingdom announced the location of the London section of the Unified Patent Court; I've not heard much about developments in Germany though.

I have a few invites for the webcast left, which I can offer to readers of this blog. Send me an email if you want one.

The map is based on a blank map by Maix, which is based on a map by Tintazul used under a CC BY-SA 2.5 license.

Monday, 7 September 2015

Portugal finalizes ratification of Unified Patent Court

Portugal has deposited its instrument of ratification. This makes Portugal officially the eighth country to do so. Five more countries, including Germany and the United Kingdom need to follow before the Unified Patent Court and Unitary Patent will be in effect.

Photo "the Barcelo cock" by leo gonzales obtained via Flickr under CC BY 2.0 license (no changes made).

Tuesday, 1 September 2015

Location selected for London branch of Unified Patent Court

Aldgate Tower, the new location of the London part of the Unified Patent Court

The Intellectual Property Office (IPO) of the UK reports that they have selected a location for the London section of the Unified Patent Court. The new court will be located in Aldgate Tower in London. 

At a recent unitary patent conference the UK informed that they would complete ratification of the unified patent court agreement by spring 2016. I interpret this announcement of a location as a confirmation that indeed the preparations for the unified patent court are continuing in the UK. There has been uncertainty on the UK's position on the unitary patent because of its current ambivalence towards the EU.  However, at present there seems to be no indication that the preparations of the UK for the unitary patent are anything different than planned.

The unified patent court has a rather complicated structure. In addition to local and regional divisions, the unified patent court will also have a central division. The central division of the Unified Patent Court will have its seat in Paris, with sections in London and Munich. The local division of UK will also be located in Aldgate Tower.

The central division will have sole jurisdiction for a number of actions. For example, direct actions for revocation of a patent shall be brought before the central division. The cases are divided over the three sections of the central division based on the subject matter of the case. For London these are Chemistry, metallurgy and Human necessities.

IPO Minister, Baroness Neville-Rolfe said today:
"The signing of this lease represents a milestone in the UK’s preparations for the introduction of the Unified Patent Court. Aldgate Tower, with its superb central location, will provide an ideal home for a modern court to support the UK’s and Europe’s leading edge innovative companies. This will further strengthen UK’s legal and professional services sector, and reinforce London’s status as a world leading centre for dispute resolution."
Photo "Aldgate Tower - London" by Jim Linwood obtained via Flickr under a CC-By license. The photo has been cropped.

Thursday, 6 August 2015

Portugal ratifies unified patent court

A commenter to a previous post alerts me that the President of Portugal has completed the Portuguese ratification process by decree.  The official page gives a link to 'Aprova o Acordo Relativo ao Tribunal Unificado de Patentes', which I presume means 'Approval of the Agreement on a Unified Patent Court'.

Portugal has not yet deposited its instrument of ratification, but as far as I know this is only a matter of time. After this final formal step, Portugal will be the eighth state to ratify the unitary patent. Only 5 to go, including the UK and Germany.

The ratification of Portugal, puts Spain between two countries Italy and Portugal that have either ratified the unified patent court agreement or seem to be about to.

President of the Republic to give Presidential assent by decree and thereafter Portugal still needs to deposit its instrument of ratification in Brussels for it to be effective - See more at:
Photo "25 April Tagus bridge " by Pedro Ribeiro Simões obtained via Flickr under CC BY 2.0 license (no changes made).

Will Unitary patents drive increased validation?

As preparations for the unitary patent continues in Europe, interest outside Europe increases. According to an Eversheds report of the recent IP Business Congress in San Francisco, US companies and non-practicing entities alike are following the developments in Europe. They seem to believe that the unitary patent will have a positive impact on the commercial value of European patents. 

An interesting prediction, which I had not heard before, is that under the influence of the unitary patent also bundle patents will be validated in an increasing number of countries. I suppose the reasoning is that, since unitary patents cover a large part of the European market, they will be worth more than bundle patents. To keep up with a unitary patent, the proprietor of a European bundle patent will thus be motivated to validate in more countries.

If this prediction turns out to be correct, it may in fact encourage the adoption of unitary patents over bundle patents. For a patent proprietor who validates in more countries, it will quickly become financially beneficial to switch to a unitary patent. Renewal fees for the unitary patent are set at the equivalent of validating in four countries.

On the other hand, some companies have other reasons to avoid the unitary patent that are unrelated to finance. For example, one may wish to avoid central invalidation, one may have concerns about the quality of UPC judges, one may wish to avoid invalidation proceedings outside the home markets, etc.  

I've previously experienced that for non-European companies that pursue European patents, selecting the country list for validation can be a headache. Obviously, you want the big economies covered, but which of the smaller countries are interesting enough to justify the costs? The unitary patent has the potential to simplify this process considerably.

Photo "United States" by Moyan Brenn obtained via Flickr under CC BY 2.0 license (no changes made).