Wednesday, June 29, 2016 Brexit? What brexit?

The UK should ratify the agreement on a unified patent court, get the unitary patent started and continue to be a member even after the Brexit is formalized.

This is the position taken by Willem Hoyng (member of the drafting committee of the UPC Rules of Proceedings and well known litigator) over at EPLAW.

This means the unitary patent system should soon come into effect as if no Brexit ever happened. London would keep its court, the EU would have its unitary patents, and everybody would be happy. Unitary patents would not necessarily be valid in the UK, but even this might be arranged with a separate international “Extension Agreement”.

According to Hoyng this is possible because the agreement on a unified patent court is an international treaty not an EU regulation, just like the  European Patent Convention. Although, the
agreement does not allow the participation of non-EU Member States, it is not required to leave the unified patent court should a country become a non-Member State.

Among the respondents at EPLAW is Leo Steenbeek (Principal IP Counsel of Philips), and he does not agree. Apart from the question whether it would make sense for country to engage in further international cooperation when it wishes to retreat from EU, there is also a question if the Court of Justice would allow this.

The position of the UK would be a bit like the one originally envisioned for Italy, part of the UPC but not (yet) of the unitary patent. If Hoyng says it's possible I'm willing to listen, but some confirmation on the legality of all this would be good. For example, an opinion of the Court of Justice on this would give the legal certainty needed for this venture. Moreover, whether there is the political will to make this happen? I'm not so sure. 

In any case, whether or not the UK can stay in after the Brexit, in any scenario it would be best if the UK would continue to ratify the agreement without delay. At least this would allow a unitary patent without the UK, and who knows, perhaps a bit more.

Photo by skeeze via Pixabay under a CC0 license (no changes made).

Thursday, November 12, 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

Friday, October 02, 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 

Monday, February 23, 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, 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.