Friday, May 13, 2016 Italy start ratification process of Unitary Patent

There are positive developments in Italy.  According to this website of the Italian Government a proposal for ratification of the Agreement of a Unified Patent court has been approved (scroll down to 'UN TRIBUNALE UNIFICATO PER I BREVETTI'). The law has not yet been finalized, and could still be rejected, but this is another step on the way of Italian ratification. I would expect that the ratification will proceed according to plan. Last year, Italy made a turn around and embraced the unitary patent, while at first they were outside the enhanced cooperation.

Below is our translation of the news:
 

Unified patent court

 Ratification and execution of the agreement on the Unified patent court (law’s proposal)

The Council of Ministers has approved a law proposal of ratification and execution of the agreement on the Unified patent court stipulated in Bruxelles on 19/02/2013

A fast ratification of the agreement will allow to complete the participation of Italy in the European Unified Patent system.

This will allow Italian innovators to use a patent right valid in all Europe. Moreover, protection against counterfeit products entering EU will be strengthened.

When the agreement on the Unified Patent Court will be enforced, it will be possible to have in Italy a local division of the Unified Patent Court: a project that could potentially enhance Italian resources and provides a signal on the willingness of Italian Government to protect and promote Italian language in Europe.

Photo by Ewan Topping via Flickr under CC-By 2.0

Wednesday, March 09, 2016 UK passes legislation for unitary patent, no ratification yet

A good month after publishing the draft legislation to amend the UK Patents Act, the UK parliament has now passed it (House of Commons on 1 March and the House of Lords on 2 March). Amending the Patent Act was necessary to adopt the unitary patent.

During the debate, Mr. Edward Vaizey (The Minister for Culture and the Digital Economy) notes that "We think that the new court and patent will be ready for business in early 2017." Indeed, the mandatory three participants have now ratified the agreement or are about to.  Two more ratifying countries are needed after Germany and the UK ratified, but this will likely not be a problem.

We are still waiting for the UK to formally ratify the Agreement on a Unified patent court. Will this happen before or after the EU referendum of 23 June? I suppose passing this legislation means that the UK government could ratify the agreement if they wanted to. I'm not sure that this is going to happen though. It may mean a hasty retreat if the referendum goes sour, after just a few months in the new system. For the UK it may be preferable to avoid this. On the other hand, even outside the EU, it is preferable for UK to have an easier option to obtain a patent in the continent. So who know what will happen.

Photo "'Belinda' Flying the Flag", by Peter Trimming via Flickr under a CC BY 2.0 license.

Thursday, March 03, 2016 Unified patent court finalizes fees and cancels opt-out fee

Opting out of the Unified Patent Court will be free!

The Preparatory Committee of the Unified patent court has decided on the Court fees and recoverable costs. The final 'Rules on Court fees and recoverable costs' is available here. 

Last year, a draft had already been published for public consultation. That draft contained two options. In a first alternative, various fee reductions are given for behavior that reduce court costs, e.g., for settling, especially early settling, or having only one judge. In the second alternative, small, and medium-sized enterprises, non-profit organizations, and public research organizations were given a fee exemption.

The final rules present a compromise between these two positions. As in alternative one, a reimbursement of court fees is available for, e.g., withdrawing and settling. Small entities do pay court fees but get a reduction of 40%.

In the fees themselves some changes have been made. The additional value based court fee for smaller action has been reduced, e.g., the value-based fee for actions up to a million euro went down from 5000 euro to 4000 euro, while the fees for larger actions has been increased, e.g., value-based fee for actions up to a 20 million went up from 85.000 euro to 100.000 euro. The value-based fee for the largest actions went up by almost 50% to 325.000 euro. Applications to be set aside by default were reduced from 3.000 euro to 1.000 euro. 

The ceilings for recoverable costs have been adjusted (mostly downwards) and a number of articles have been added that clarify what these costs cover. Moreover, the court is allowed to increase the ceilings in case multiple languages are used. 

The big surprise in the new rules is the cancellation of the opt-out fee. In the previous draft applying or withdrawing an opt-out costed 80 euro. In the new and final draft both are free. One problem with the organization of the opt-out system was paying for them. It had been rumored that an opt-out would have to be paid for individually by credit card. If one would have to opt-out a few thousand patents, it might mean a lot of work just paying the opt-out fees. These problems are mooted by cancelling the opt-out fee.

Photo "Free" by Ganesha Balunsat via Flickr under a CC BY 2.0 license.

Wednesday, February 17, 2016 Germany starts ratification unified patent court

Things are speeding up for unitary patent in Germany

At last Germany has started the ratification of the Agreement on a unified patent court and thus also on the unitary patent. Although no-one doubted that Germany would eventually ratify, we had no news that the ratification was actually being prepared.

The ratification of Germany, France, and the United Kingdom is required before the unitary patent comes into effect. The United Kingdom had already started the ratification process, and France ratified already in 2014. Now also Germany has started the ratification process.

The Bundesjustizministerium (Federal Ministry of Justice) has published two law proposals. The first proposal is to ratify the unified patent court. The other one contains changes to the German patent law to accommodate the unitary patent. (Both are in German).

According to Juve (German), there are some concerns about how the proposed law regulates the prohibition on double patenting and the enforcement of decisions of the UPC. 


This step brings the unitary patent a lot closer. The unitary patent system enters into force on the first day of the fourth month after the 13th state, but including Germany and the United Kingdom, ratify the agreement. Currently, nine countries ratified. So to get an entry into force in 2016, we need Germany and the United Kingdom, plus two additional countries to finish ratification within the next half year. I'm not sure if that is possible, but a launch in early 2017 is certainly in the cards.

Photo "World Championship 2015 - sleddog race" by Ralf Κλενγε, via Flickr, under CC-By 2.0 license. 

Wednesday, February 10, 2016 Spain: Just English or either include Spanish

American films in Spain

 In an interview in World IP Review Ms. Garcia-Escudero the head of the Spanish patent office (OEPM) looks back on the negotiations for the unitary patent system:

“During the negotiations, one of our proposals was either to include the Spanish language or to have just one official language: English. They didn’t approve either offer, so we stayed out.”

The unitary patent favors the official languages of the EPO: English, German and French. Since the unitary patent is linked to the existing European patent, the unitary patent uses the same official languages. Spain, and also Italy, do not agree with this.

There may be some problems with the offers suggested by Spain. The EU cannot change the official languages of the EPO, since the European Patent Convention (EPC) is not an EU regulation but an international agreement. In fact some members of the EPC are not EU members. Changing the EPC, although possible, is a lengthy undertaking.

Realistically, one could at best desire that if a unitary patent is granted by EPO in a language different from English, then the proprietor should provide an English translation. However, a requirement like this has been adopted in the unitary patent. A request for unitary effect must include a full translation of the specification of the European patent into English if the language of the proceedings is French or German (Article 6(1)(a), Council regulation 1260/2012). Admittedly, this is only required during a transitional period (up to 12 years). To make things fair, you also have to submit a translation if the language of the proceedings was English, but in this case you can pick any official EU language you like.


After negotiations within the EU broke down, the EU used the--rarely used--possibility of 'enhanced cooperation' (Article 20 of the European Union Treaty). 'Enhanced' cooperation allows some member states to be excluded from the cooperation. In this case Spain and Italy who remained opposed to the new unitary patent were excluded. Italy has later rejoined the unitary patent system (while stressing that it remained opposed to the language regime).

Spain and (in part) Italy have complained about this with the  EU Court of Justice. The court agreed that the Spanish language was treated differently, but that this was allowable if it this was needed to get a cost efficient system.

The absence of Spain from the unitary patent will force us to “reflect on the importance of the Spanish language and technology”, according to Garcia-Escudero. The absence of Spain, the fifth EU economy by GDP, is indeed regrettable and will make the unitary patent a bit less attractive. In any case it will force a proprietor of a unitary patent to reflect if it wants to additionally validate the corresponding European patent in Spain (this is allowed).

Italy has since decided that a strong patent that is valid European wide is too important, and has decided to join the unitary patent system after all even though it is not happy with the languages. Hopefully, Spain will do the same someday.

Photo "American films in Spain" by Brian Snelson via Flickr under CC-BY 2.0 license

Monday, January 25, 2016 United Kingdom publishes draft legislation for Unitary Patent law

Spring in London

The UK government has published draft legislation to amend the UK Patents Act. The changes allow the unitary patent and unified patent court in the united kingdom. The order, which has the longish citation title " Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016", is laid before Parliament for approval by resolution of each House of Parliament.


The legislation has the form of a 'Statutory Instrument' . According to IPKat approval for a Statutory Instrument is usually quite quick. Once the order has been approved the UK can ratify the Agreement on a Unified patent court. I'm told that the planning is for the legislation to be completed by spring 2016.

The government also published a response to the a consultation on the unitary patent. The response is published here.

Photo "Spring in London" by DncnH via Flickr under a CC-By license.

Thursday, January 21, 2016 Finland ratifies Unitary Patent

Finnish Parliament

Finland has fully ratified the 'Agreement on a Unified Patent Court' by depositing its instrument of ratification. By ratifying the agreement it will be possible to get protection for an invention through a unitary patent in Finland together with all other countries that have ratified the unitary patent. Moreover, the unified patent court will have jurisdiction to decide over both unitary patents but also 'classic' European patents that have been validated for Finland (unless opted-out).


The website of the Finish parliament shows two acts that are related to the Finish ratification, both from January 13, 2016.

23/2016
Laki patenttilain muuttamisesta, 13.1.2016

22/2016 Suomeksi På svenska
Laki yhdistetystä patenttituomioistuimesta tehdyn sopimuksen lainsäädännön alaan kuuluvien määräysten voimaansaattamisesta ja sopimuksen soveltamisesta , 13.1.2016


According to Google Translate these are an  'Act amending the Patents Act' and a 'Law on the unified patent court bringing into force the provisions pertaining to the law of the agreement and the application of the Agreement'. If Google Translate does not deceive me then the latter allows Finland to also sign the
Protocol on provisional application of the Unified Patent Court Agreement; Finland has not yet done so.


The full list of countries that have currently ratified the agreement is: Austria, Belgium, Denmark, France, Luxembourg, Malta, Portugal, Sweden, and Finland. Including the mandatory countries United Kingdom and Germany, we are now two countries short of the set of 13 countries required for the unitary patent system to start.

I haven't seen heard if Finland has decided to have a local unified patent court.

 Photo "Kyösti Kallio and Parliament House of Finland" by Tomi Lattu via Flickr, under CC-BY-2.0 license