Monday, July 13, 2015 Italy asks EU: Can we join unitary patent?

Italy has sent notification to the EU of "its intention to participate in the enhanced cooperation in the area of the creation of unitary patent protection and in the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements".

The department for European affairs has a statement on its website. In our translation:

This morning I wrote to the Commissioner for the internal market, industry, entrepreneurship and SMEs, Elżbieta Bienkowska, and the presidency of Luxembourg announcing the Italian decision to join the European Union unitary patent.

What we have taken is a necessary and useful choice for Italian companies, that does not affect our position determined to defend the role of the Italian language in the European institutions.

Italy and the European Union need innovation to restart and I think this is a step in the right direction.

Until now Italy was the only country in the curious position that it had signed the Agreement on a unified patent court, but was not a party to the EU regulations on the unitary patent. In other words, Italy could have a court with the power the rule over unitary patents, even though those patents would not be valid in Italy.

Italy has now asked the EU to be counted in in the 'enhanced cooperation'.  As I remarked before any EU state can join the enhanced cooperation (Article 20 of the European Union Treaty). This means that it is virtually certain that Italy will join the unitary patent.

For unitary patents to be valid in Italy it is also needed that Italy ratifies the Agreement on a unified patent court. Given the fact that they have asked to join the unitary patent it seems highly likely that they will do so.  Thus it seems likely that unitary patent will be valid in Italy also.

After Italy there are two more countries that are not party to the EU regulations (Spain and Croatia). They could make the same move as Italy, though in case of Spain this seems unlikely. Interestingly if Croatia joins, patents that were filed before 2008 become ineligible for unitary effect. Should Croatia join after the unitary patent started we have the legal situation in which older patent applications retroactively loose eligibility for unitary effect.
 
Some countries who are party to the enhanced cooperation have announced that they will not ratify the Agreement (Poland). In practice this will amount to the same thing (unitary patents will not be valid, the unified court will have no jurisdiction).

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

Wednesday, June 24, 2015 Uncertainty about unitary patent in 2016

Both the unified patent court and the EPO are optimistic about 2016 to start the unitary patent system. Kevin Mooney, who chaired the Drafting Committee of the unified patent court, said that the unified patent court could start taking its first cases in October 2016. Batistelli, the president of EPO has recently said that he expects the EPO to grant the first unitary patent in 2016.

On the ratification side, there is progress as well. Currently 7 out of the required 13 countries have notified the Council of the European Union of their ratification. 

On the other hand some countries are indicating delay in their ratification.

David Cameron said he wants the have an 'in-out' referendum at the end of 2017. It seems unlikely, that the UK will ratify a major new European project on the brink of deciding if they want to stay in the EU at all. Without the UK, the unitary patent cannot start. This would mean that the unitary patent would be postponed to 2018. Assuming of course that the UK decides to stay in the EU. If they would leave the EU, it is unclear what will happen.

Ireland has previously said that they will have a referendum on the unitary patent. But recently, Irish minister James Reilly indicated that there would be no more referenda during this Parliament.This means that Ireland cannot decide on the unitary patent until after the next elections. This would push an Irish ratification well into 2016. Poland has indicated that it will not ratify at all.

Friday, May 29, 2015 Luxembourgh fully ratified Agreement on unified patent court

Luxembourg has deposited its instrument of ratification with the Council of the European Union, making it the seventh state to officially ratify the Agreement on a Unified Patent Court.

We reported earlier that the ratification had been adopted unanimously in the Luxembourg parliament. The current formal step completes the ratification process.

At present 7 states have completed the ratification process. 13 states, including  France, Germany, and the United Kingdom, are required to ratify before the unitary patent comes into effect. Of the required states only France has ratified at this moment.

Last Monday was the final day of the public consultation concerning the draft amendments of the Dutch national patent law. Quite a number of articles are amended or introduced to accommodate the unitary patent. Of we course we have also been looking at the proposal in the past weeks. On the whole the proposal looks solid and will make the Netherlands ready for adoption of the unitary patent.

Some of the interesting articles include the following:

Reestablishment

A new article 23a1 will allow reestablishment in case of the request for registration of unitary effect is denied. The deadline for filing this request is one month after publication of the mention of grant. The deadline for classic national validation is 3 months. So if your request for registration of unitary effect is denied, you may not have the opportunity for national validation anymore. This article allows you to get a Dutch patent in case your request for registration of unitary effect is denied and you missed the normal validation deadline.

One problem that I see with this article is that the delayed validation is not applicable while in Court. So if you challenge the denial in Court, you need to wait until the Court made its decision. Should that decision be negative, i.e., your request for registration is still denied, you can then apply for validation according to the new article. It is not possible to withdraw the Court case and validate earlier.

Protection in Curaçao and Sint-Maarten

A Dutch patent or a European patent validated in the Netherlands are also valid in Curaçao and Sint-Maarten. However, the unitary patent only applies to the European parts of the Netherlands. There is thus a loss of protection if one chooses for a unitary patent instead of a nationally validated patent. This has been implemented in a new article 50a which says that once the request for unitary effect has been registered, the patent is no longer in force in the European part of the Netherlands.

This has the interesting (and intentional) side-effect that even if unitary effect has been registered, one can still validate the European patent in the Netherlands. However, this Dutch validated patent will only be valid in the non-European part of the Netherlands, i.e., Curaçao and Sint-Maarten.

This means that if the loss of protection for these regions is a problem one can still validate for them, and obtain protection. Unfortunately the cost for this protection on top of the unitary patent is the same as a Dutch validation currently costs, i.e., the same renewal fees.

Pharmacy exception 

The agreement on a unified patent court includes the so-called pharmacy exception; the extemporaneous preparation by a pharmacy, for individual cases, of a medicine in accordance with a medical prescription is excepted from patent protection (Article 27(e) of the Agreement). This exception has been included in the Dutch patent law, and will thus also apply to non-unitary patents in the Netherlands. Interesting the phrase 'extemporaneous' has been translated as 'voor direct gebruik' (for immediate use). I'm not sure those two mean exactly the same thing. Then again, I'm not sure what extemporaneous really means either.

According to the official notes to the proposal (my translation):

The exemption applies, however, only if the preparation is for immediate use and is carried out in individual cases. This exception does not apply to producing for stock. In view of this the exemption will only apply in exceptional cases. The Dutch law is therefore in line with the Judiciary Treaty and the laws in the surrounding countries.

I have no idea about the law in the surrounding countries with respect to the pharmacy exception. I only found this Italian case. Apparently Italy also has an exception for the extemporaneous preparation by a pharmacy. The Italian court ruled that this allowed the preparation of a patented drug with a different dosage in view of a patient’s special needs. The preparation of a patented drug by the Italian pharmacists however did infringe. It will be interesting to see how the Dutch Court and/or the Unified Patent court will apply this exception.

The final proposal for amendments of the Dutch national patent law should be available before summer. 

Wednesday, May 20, 2015 Joining the unitary patent is now a priority for Italy

A press release on the website of the Italian Ministry of Economic Development stated that Italy wants to join the Unitary patent. We speculated earlier that Italy was considering making this step after the Italian Ministry of Economic Development submitted a formal call for comments the unitary patent.


The Secretary for Economic Development Simona Vicari stated that (our translation)

"For the Ministry of Economic Development, accession to the unitary patent it is a priority. After the judgment of the Court of Justice of the EU on May 5 that rejected the appeal of Spain, we have had confirmation that the legal framework of the unitary patent system is not in discussion.

Membership to the unitary patent system is, for the Ministry of Economic Development, in line with the interests of a country that focuses on innovation and internationalization of its companies and which wants to ensure a timelier and uniform EU-protection to whom invests in research, development, innovation and thereby applies for a patent.

In addition, the new system should promote to combat counterfeit on a transnational scale and consequently improve attraction of foreign direct investment in our country.

Having in Italy a branch of the Unified Patent Court (TUB), will enable our companies to have available a national office in which they can protect their interests also in Italian, not to mention that if we adhere now to the unitary patent system we can still hope to have a voice regarding the unitary patent renewal fees and their distribution, and ask for more support for our SMEs"

Having Italy in the unitary patent would be a welcome addition as Italy is one of the larger European economies (fourth in GDP according to Wikipedia).

I'm guessing that Vicari's wish for more support for SME, means that she supports the so-called TOP5 proposal of Battistelli, in which renewal fees are generally higher but in which SMEs get a 25% reduction for the first renewal years. Likewise, she may favor the fee proposal for the Unified patent court in which SMEs pay no fees at all. 

For Italy to join the unified patent court they will have to ratify the Agreement on a Unified Patent court. This should not be problem, as they are already a signatory to this agreement. 

However, Italy also needs to ensure that the EU regulations apply to them. The Unitary patent is regulated as an enhanced cooperation which excludes Spain and Italy. I understand from Article 20 of the European Union Treaty that such cooperation shall be open at any time to all Member States. So Italy can join the EU part of the unitary patent any time they wish.

Tuesday, May 05, 2015 Internet consultation started for Dutch unitary patent law

The Netherlands have started the ratification process of the Agreement on a Unified Patent Court. A draft proposal ratifying the agreement is online. The Netherlands have indicated that it wants to be part of the new European patent system from the start. At present, six countries have fully ratified the agreement (Austria, Belgium, Denmark, France, Malta, and Sweden)

In addition to ratifying the agreement also a proposal for amendment of the Dutch Patent act is presented. The proposed amendment brings the Patents Act 1995 in line with the substantive provisions of the agreement, and includes any other adjustments to ensure proper functioning of the European patent with unitary effect. This means that when the amendments and the ratification are done, the Dutch the legislature should be ready for the unitary patent.

Last Friday, May 1st, 2015 the Dutch government launched an Internet consultation for the proposed amendments to the Dutch Patent act.

The consultation period is three weeks, that is, until May 25, 2015. The consultation period has been shortened from the regular 4 weeks so that the bill may be presented for advice to the Raad van State (State Council) before summer. This advice is a required part of amending a law. 

The Internet consultation is online. All text is in Dutch. Should you want to send in a response the Ministry of Economic affairs asks you to make concrete text suggestions and to send in your response as early as possible.

Tuesday, March 24, 2015 Luxembourgh progressing with unified patent court ratification

It appears that the Luxembourg parliament is making progress, or even ratified the Agreement on a Unified Patent Court. Ratification of the unified patent court implies that the unitary patent will be valid in Luxembourg as well.

On 18 March 2015 a vote was held on Dossier parlementaire 6696: 'Projet de loi portant approbation de l'Accord relatif à une juridiction unifiée du brevet, signé à Bruxelles, le 19 février 2013' (Bill approving the Agreement on a unified patent court, signed in Brussels, 19 February 2013).

The website of the Chambre des Députés informs us of a 'Premier vote constitutionnel (Vote positif)' (First constitutional vote (Positive vote)) and that 'Une demande de dispense du second vote a été introduit'(An application for exemption of the second voting was introduced). 

I can't tell from Luxemburg's  website if the exemption was accepted or not. [Update: according to commenter TreatyNotifier this was accepted]

For now ratification has not yet shown up on the the site of the Council of the European Union, where the instrument of ratification will have to be deposited. We have seen with previous ratifying countries that there may be some time between the ratification in parliament and the deposition of the instrument.

 
All 54 member voted in favor of the Unified patent court.  According to the tweet below the discussion was mainly about language and costs--two unitary patent hot button items.
 

Luxembourg parliam today approved #UnifiedPatentCourt Agreement unanimously! main discussion was languages/costs. #unitarypatent @ChambreLux
— Pacta sunt servanda (@TreatyNotifier) March 18, 2015

 

Monday, July 21, 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, July 14, 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, July 07, 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.

Conclusion

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, July 04, 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.

Tuesday, June 17, 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

France
Austria
Sweden

Serious ratification progress

United Kingdom
Malta
Belgium
Denmark

Announced plans for a division of the unified patent court 

Lithuania
Latvia
Estonia


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, June 16, 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, May 12, 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.

Monday, December 23, 2013 Denmark to vote on unitary patent in referendum on May, 25th

According to the Copenhagen post, Denmark will definitely hold a referendum before joining the unified patent court. The unitary patent requires 13 states to ratify the Agreement on a Unified Patent Court. Denmark is one of the 25 countries that is currently eligible to ratify.

Monday, September 23, 2013 Austria ratifies Agreement on a Unified Patent Court

On 07.08.2013 Austria ratified the Agreement on a Unified Patent Court. Although 25 EU countries had already signed the Agreement on a Unified Patent Court, Austria is now the first country to already ratify the agreement.

For the unitary patent to enter into force, 13 countries need to ratify, including Germany, France and the United Kingdom. 12 more countries to go!

Wednesday, May 08, 2013 Referendum on Unified Patent Court in Ireland

According to the EUobserver, junior minister Sean Sherlock has confirmed that Ireland will have to hold a referendum before ratifying the agreement on a Unified Patent Court. TheJournal notes that Ireland's Supreme Court requires a referendum for any transfer of judicial powers to an international body.

The Unified Patent Court will entail such a transfer. Apart from unitary patents, the unified patent court will also be competent for 'regular' European Patents, i.e., without unitary effect. Once a European Patent has been granted it has the same effect as a national patent in the contracting states, including Ireland.