In June 2023 the European patent landscape will see one of the most dramatic changes in decades with the introduction of the Unitary Patent (UP) and the opening of Unified Patent Court (UPC). In a short series this blog will go through the main characteristics of the system and decisions that need to made to get ready and to protect inventions, both new and existing. The 5th and last part: just two more days!
Since this report on the Kluwer Patent Blog, with the ever optimistic Kevin Mooney – who was involved in laying down the UPC’s Rules of Procedure – saying the court could probably open its doors in January 2016, many, many predicted dates for the start of the UPC’s operations have passed. But finally the moment has come! Just two more days and the sunrise period of the Unified Patent Court will start. And three months after that, on 1 June 2023, the court will open for cases and at the same moment the Unitary Patent will see the light of day.
Since January 2023, transitional measures for European patent applications have already entered into force at the EPO. Applicants can file early requests for unitary effect. Or they can request to delay the grant of a European patent in the final phase of the procedure. In this way it can be avoided that applicants miss the opportunity to obtain a Unitary Patent in the transitional phase. According to the EPO, more than 2200 requests for unitary effect and/or for delay of grant have been filed since the start of the year.
Most attention in the upcoming weeks will undoubtedly go the Unified Patent Court and more particularly the sunrise period. European patents will probably be opted out massively, and it would be a boost for the trust in the new UP system if this goes smoothly. Over the last half year there has been quite some trouble to get the IT system up and running, particularly the strong authentication required to access the Case Management System.
The upcoming changes in Europe’s patent system have led to a flurry of activity. Law firms and their clients have prepared with new litigation cooperation, booklets, trainings, lectures inside and outside Europe, webinars, discussion tables and mock proceedings for the new era.
Important choices are currently being made, agreements checked. Patent proprietors who prefer to keep things as they are for the moment, need to realize that future and existing European patents fall under the jurisdiction of the UPC unless they are opted out. So action is required.
And many other issues need attention: Are there licensing agreements which need to be changed? In case of co-ownership of a patent, are amendments necessary in view of the national law that will be applicable?
Many experts think that the Unitary Patent will need time to find its niche but the Unified Patent Count may conquer ground faster.
The Unitary Patent has many advantages. It provides widespread protection, in currently 17 EU member states, for a relatively low fee. No translations are necessary after the transitional phase. The EPO collects the renewal fees, there is one central register and litigation at the UPC. This central litigation however has an important downside as well: the risk of revocation across multiple countries all in one go. And the court is expensive in comparison to many national courts.
A traditional European patent can be preferable if protection is sought in a relatively low number of states. As many proprietors will seek protection not only in UP member states, but also in the UK for instance and possibly other non-UP-states, the option of a Unitary Patent is less attractive for them. Moreover, an advantage of the traditional European patent (or national patents) is that coverage and costs can easily be reduced over time by letting it lapse in some countries. The UP is all or nothing.
Other reasons to stay away from UP and UPC are legal uncertainties inherent to an untested system. There is no UPC case law yet, and the whole system itself may be challenged in court, for instance because of the way changes due to the Brexit were implemented.
Decades of endeavours to create a new patent system have ended, a new phase is starting. It will be very exciting to see what effect the Unitary Patent system will have on the European patent landscape.
Earlier episodes in this series: The bumpy road to the Unitary Patent system, Scope of the Unitary Patent system, Languages and costs of the Unitary Patent, the Unified Patent Court.
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“Other reasons to stay away from UP and UPC are legal uncertainties inherent to an untested system. There is no UPC case law yet, and the whole system itself may be challenged in court, for instance because of the way changes due to the Brexit were implemented.”
Add to that one that it is not a “common court”, and the removal of National Courts is a potential infringement of the right of National Courts to interpret EU law, and to ask the CJEU via preliminary questions (art267 TFEU). You can find a similar problem in intra-EU investment courts (Achmea, PL Holdings, EnergyCharter) where National Courts were removed.
Where is the basis for the assertion that the UPC has no right to refer preliminary questions to the CJEU?
Ask yourself this: is the UPC a “court or tribunal of a Member State” in the sense of Article 267 TFEU?
The CJEU’s case law indicates that a court common to multiple Member States can meet this criterion. Also, Brussels II as amended states that the UPC is a court common to the Member States. HOWEVER, this is NOT the end of the analysis.
Simply stating (whether in an EU Regulation or otherwise) that the UPC is a court common to the Member States does not make it so, especially as there are serious doubts over whether the UPC satisfies the relevant criteria set out in the CJEU’s case law. If those doubts turn out to be well-founded, then the UPC will not be able to make preliminary references to the CJEU. It is as simple as that.
Whether the UPC is according to Art 21 UPCA a court common to the Contracting Member States and as part of their judicial system remains to be seen. It is a purely declarative statement.
Art 21 UPCA has given the UPC the right to requests for preliminary rulings.
I would however observe that the CJEU has never said that the UPC is a court common to the Contracting Member States and is part of their judicial system or if it is prepared to accept such requests for preliminary rulings from the UPC.
If the CJEU gives a positive reply to those questions, what would withhold the CJEU of giving comments on the substance and the interpretation of the EPC? This is exactly what all the proponents of the UPC wanted to avoid.
When dealing with SPC at the request of national courts, the CJEU is actually interpreting claims granted by the EPO.
The figure of more than 2200 requests for unitary effect and/or for delay of grant have been filed since the start of the year may look impressive.
On the other hand this figure should be compared with the actual number of communications under R 71(3) which were actually issued for the same period.
It should also be interesting to know how many of those requests for unitary effect and/or for delay of grant have been filed by SMEs and the like.
Only then the figures of requests for unitary effect and/or for delay of grant will have a proper meaning.
Knowing the propensity of the EPO to embellish the situation when it benefits from it, the figure announced should thus be taken with more than a pinch of salt.
The EPO should publish figures which have a solid meaning and not just look apparently good.
It can be doubted that the Unitary Patent has many advantages. The advantages have been claimed, but never based on reliable data. SMEs have been no more than a fig leaf to hide private interests behind it.
It might provide widespread protection, in currently 17 EU member states, for a relatively low fee. The fee is only low when compared to the fee for all 17 states. As the number of validations of European patents is relatively low, the comparison boils down to comparing apples and pears.
Are the translations required during the transitional phase in accordance with the London Agreement on Art 65? Reasonable doubts are permitted!
At least it has been brought forward that there are many reasons to stay away from UP and UPC.
The legal uncertainties inherent to an untested system are no so important. It was the same when the EPO opened its doors. The EPO was, up to the recent years, a success story. With the dwindling quality of the patents granted it might not stay like this.
At least, case law of the UPC should not be in flagrant contradiction with the case law of the boards of appeal of the EPO in matters of validity.
That the whole system itself will be challenged in court, for instance because of the way changes due to the Brexit were implemented, is more certain than the contrary. Too many problems have been swept under the carpet!
“There is no UPC case law yet, and the whole system itself may be challenged in court, for instance because of the way changes due to the Brexit were implemented.”
Actually, a serious issue of the UPC is that NO “changes due to the Brexit” have been implemented.
If things were not already bad enough from a rule of law perspective, reports of haggling over the competencies allocated to the UPC’s central locations show that those involved have completely taken leave of their senses:
This has got to stop. The UPC will have precisely zero democratic legitimacy if, without even the slightest hint of an adequate legal basis, the UPC’s Administrative Committee starts claiming the power to make such substantive amendments to the UPC Agreement.
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