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).