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 This is not a desirable situation: even if a patent has been revoked in one country the rest of Europe does not if it is free to operate or not.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).


  1. Whilst the UPC could bring about harmonisation, it is curious to see that a high representative of the EPO takes a stance against his own organisation. Such a plea is not surprising when one sees the disdain with which the President of the EPO looks at the BA and wants to discipline them.
    As a unitary or not-unitary patent is granted by the EPO, it will be according to the Guidelines and the Case Law of the Boards of Appeal.
    No mechanism has been set in case of diverging case law between the UPC and the BA. This might be a problem in the future which has been carefully avoided by the promoters of the UPC.
    Saying that the harmonisation will come from the UPC is simply pushing the BA of the EPO in the background.
    When one sees for instance how the difference are between decisions of the BGH and European Practice, one wonders what will happen. The same can happen between the UPC and the BA of the EPO.
    See for instance on procedural matters X ZR 109/08-Sensoranordnung-If an independent claim is not patentable, this does not mean that automatically the dependent claims are not allowable. They should be checked.
    On substantive matters see X ZR 161/12-Wundbehandlung- which is in clear contradiction with G 1/93. A claim containing a limiting feature which is actually added matter is to not to be considered when assessing patentability of the claim, and is only to be nullified if the added subject-matter leads to an aliud.
    Does harmonisation means the end of the BA? That is the question to be asked.

    1. You raise a valid point Observer. Thanks for responding.

      Not only is there divergence between the different countries, there is also (some) divergence between the courts and the Board of Appeal. I have the impression that the Dutch judges regard the EPO case law as leading--at least in so far as it is settled.

      If the case law of the UPC is seen in the world as important, then it would be strange if the boards of appeal were to ignore it. At the moment though, even if the board of appeal wanted to align closer to the courts, they have consider at least a handful of legal traditions, if not more. Under the UPC it will be much clearer what the leading court is. It won't spell the 'end' of the BoA, but it will mean they have to take other jurisdictions more seriously.

      I'm not sure that Mr. Philpott necessarily took a stance against the EPO though. [but I wasn't there]

  2. I was not there either, but by stating that the UPC will harmonise, what is still to be seen, it does seem rather strange that a high ranking official of the EPO lets out such a statement. The decision of the BGH goes against G decisions. Unless G decisions are to be ignored, they remind valid until they are not superseded by new ones. At present the EBA has only once revised its case law. It was about the proprietor opposing his own patent.
    For instance G 1/03 has created a fiction. What if the UPC says it does not like it, or gives other possibilities?