Monday, 23 February 2015

Is the Italian government reconsidering its position on the unitary patent?

At present the Italy has a unique position with respect to the unitary patent: participating in the unified patent court but not in the unitary patent.

Italy is one of the countries that are excepted from the EU unitary patent regulation. This means that a unitary patent will not be valid in Italy. Also Spain negotiated a special position for the unitary patent. Unitary patent won't be valid in Spain either.

Unlike Spain however, Italy did sign the Agreement on a unified patent court. Italy has not ratified this document yet, but as far as I know Italy does intent to sign this Agreement eventually [ at present only six countries have ]. 

Assuming Italy would ratify the Agreement, we would have the interesting situation that a unitary patent would not be valid in Italy, but a local division of the unified patent court could nevertheless revoke a unitary patent for the rest of Europe. Fortunately, this scenario would be under the control of the patent proprietor. Since a unitary patent cannot be infringed in Italy, a local division of the unified patent court could still be competent if the alleged infringer defending the suit has its residence in Italy (Article 33(1)(b) of the agreement).

Apparently the Italian government is considering how to move forward in this curious situation. According to Gualtiero Dragotti the Italian Ministry of Economic Development submitted a formal call for comments about the following options:

Option 1: Italy to join the Enhanced cooperation and to ratify the UPC Treaty;

Option 2: Italy remaining adverse to the Unitary Patent but to ratify the UPC Treaty; or

Option 3: Italy against both the Unitary Patent and  the UPC Treaty.

The first option would move Italy away from Spain.  In a sense this is already the case. During the first legal challenges against the unitary patent system, Italy and Spain both complained at the Court of Justice. However, in the current legal challenge only Spain is a party.

The second option would continue the current situation. It seems that this option is a loss for everybody. The unitary patent loses an important economy, but on the other hand Italy will have to bear the costs for a unified patent court.

With the third option, Italy would move closer back to Spain which did not sign the Agreement, and thus will also not ratify it, at least not in the foreseeable future.

Being an important economy (fourth in GDP according to Wikipedia) and the fact that they are not active anymore in challenging the unitary patent, it is my expectation that the Italy will take the first option and join the unitary patent. The first option would bring Italy back into the unitary patent fold and join Austria, Belgium, Denmark, France, Malta and Sweden as the fully ratified countries.

The request for comments only gave 4 days to respond (the request was issued on 16 February, while last Friday was the deadline for comments). What is the reason for this urgency?

Monday, 16 February 2015

Does a lack of judicial review initiated by third party pose a threat to the unitary patent?

Does a lack of judicial review initiated by third party pose a threat to the unitary patent? This question was raised by Gordon Harris based on an experience he had with such a situation (found via an article by James Nurton).

At the EPO a third party has only limited possibilities to attack a patent based on alleged administrative errors of the EPO; Before grant the only procedural option is to file third-party observations (Art. 115 EPC) and after grant one may file an opposition (Art. 99 EPC). The problem is that one is not a party with the first option and that one may raise only a limited--mostly substantive--list of issues with the second option (Art. 100 EPC).

National judges could potentially rectify such errors, but they are bound by a similarly limited set of objections as well, and may moreover not be willing to review administrative decisions of the EPO either.

In a lengthy court case between Virgin and Zodiac this played a role. The EPO had granted a patent for the UK against the applicant's explicit wish not to designate the UK.

Efforts to correct this error of the EPO turned out to be fruitless. The appeal boards rejected a request for correction of the decision to grant filed during opposition on the basis, that the opposition division is not competent to do so. The situation in the national courts was similar.

In the end, the court cases were unsuccessful for the patent proprietor, but because the patent was found not to be infringed.

Presumably also the unified patent court will refuse to review administrative decisions of the EPO.
The article awaits with interest the outcome of Spain's petition to the CJEU regarding the unitary patent. Indeed, Spain has complained against this. In its legal challenge against the unitary patent, Spain complains of 'Breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.' (Case C-146/13, in the words of the official summary)

No verdict has been reached yet, but  advocate-general has published it conclusion. The conclusion seems to point into a different direction. The opinion notes that "La protection unitaire que le règlement attaqué organise ne prend donc effet qu’après que le brevet européen est délivré et aussi longtemps que celui-ci est maintenu en vigueur. Ce règlement se borne ainsi à attribuer aux brevets européens une qualité supplémentaire, à savoir l’effet unitaire, sans affecter la procédure réglée par la CBE (24), que les États membres de l’Union en tant qu’États parties à cette convention sont tenus de respecter."

 [ for some reason the opinion is translated in 22 languages except English; in my translation:

The unitary protection that the Regulation organizes therefore takes effect only after the European patent is granted and for so long as it is kept in force. This regulation is thus limited to assigning to European patents an additional quality, namely the unitary effect without affecting the procedure set by the EPC (24), that the EU Member States as States parties to the Convention must respect.

The  Court of Justice of the EU does not have to follow the conclusion of the advocate-general, but often does so. With this opinion it does not look likely that they will revoke the unitary patent on this ground.

At present it looks it that also under the unitary system administrative errors cannot be judicially reviewed at the initiative of third parties. Frankly, I'm not directly convinced, even by this extreme case, that this is a situation that needs to be addressed. As they say: Hard cases make bad law.

[This posts was prepared only on the basis of the information found in this article and the public file at the EPO. We also blogged about the Board of appeal's decision T 1495/09]