The Unified Patent Court (UPC) is a proposed common patent court open for participation of all member states of the European Union. The Court will hear cases regarding infringement and revocation proceedings of European patents (including unitary patents) valid in the territories of the participating states, with a single court ruling being directly applicable throughout those territories. Requesting unitary patents upon the grant of certain European patents will be possible from the establishment of the UPC. The Court is to be established by the Agreement on a Unified Patent Court, which was signed as an intergovernmental treaty in February 2013 by 25 states (all EU member states except Spain, Poland and Croatia). It will enter into force on the first day of the fourth month after meeting three predefined conditions. The UPC comprises a Court of First Instance, a Court of Appeal in Luxembourg, an Arbitration and Mediation Center and a common Registry. The Court of First Instance will consist of a central division in Paris (with thematic sections in London and Munich) along with several local and regional divisions.
Background
European patents are granted by the European Patent Office under the 1973 European Patent Convention. 38 countries (including all countries of the European Union) are parties to the Convention. After grant, a European patent essentially becomes "a bundle of national patents" (subject, in some countries, to translation requirements in an official language of that country) in all countries separately, after which renewal fees are also due in all countries. Infringement procedures in one country have essentially no effect in others, which sometimes leads to multiple lawsuits regarding the same European patent in different countries; sometimes leading to different results. To reduce translation and litigation costs, the European Union has passed legislation regarding European patents with unitary effect. Registration of unitary effect is to be organized by the European Patent Office and is expected to result in limited translation requirements and a single renewal fee for the whole territory. As Spain and Italy objected to the translation requirements (featuring only the European Patent Convention languages English, German and French), they did not originally participate in the regulation, which was thus been organized as an enhanced cooperation mechanism between member states, though Italy subsequently joined. Unitary patent protection however also requires a uniform litigation system, provided for with the Unified Patent Court, constituted with the Agreement on a Unified Patent Court, signed on 19 February 2013. The Agreement also incorporates many of the provisions of the proposed European Patent Litigation Agreement.
Locations
The Court of First Instance would have a central division with its seat in Paris and thematic sections in London (focusing on chemistry cases, including pharmaceuticals, i.e. International Patent Classification (IPC) classification C, and human necessities, i.e. IPC classification A) and Munich (mechanical engineering cases, i.e. IPC classification F) each expected to take about 30% of the case load. Furthermore, participating countries may set up a single or (if conditions regarding minimum case load are met) multiple local divisions of the court. Countries may also set up a regional division, serving as the local division of the group. The agreement does not define which countries would set up local or regional divisions.
The court of Appeal would be located in Luxembourg and would also serve as the registry.
Training of judges would take place in Budapest, while Lisbon and Ljubljana would host Patent Arbitration and Mediation Centres. The training centre for judges and candidate judges was officially opened on 13 March 2014 in Budapest.
Court of First Instance
While the locations of the Central Court have been fixed in an Annex to the Agreement on a Unified Patent Court, Contracting States are free to set up local or regional divisions up to a maximum number. Not all locations of regional and local divisions have been announced. The characteristics of known divisions and their territorial jurisdiction is shown below:
Operation
The system would include both legally qualified and technically qualified judges, who would sit in a composition of three (Court of First Instance) or five (Court of Appeal) judges. Local divisions may request (on their own proposal or on the request of one of the parties) to have an extra technically qualified judge added.
An overview of the composition of the judges is shown below:
A Of different nationalities
B Upon request of one of the parties (or the panel)
Appeals may be brought before the Court of Appeal both on points of law or on the facts of the case. In case of questions regarding the interpretation of EU law, questions can be submitted to the European Court of Justice.
Proceedings would take in principle place in the local language of the division and in the language in which the patent was granted (English, German and French) in the central division. The court of appeal would proceed in the language used at the court of first instance.
Leadership
Three committees are to be constituted "to ensure effective operation and implementation" of the Agreement:
- Administrative committee
- Budget committee
- Advisory committee
A preparatory committee was established enabling entry into force when the required number of ratifications is reached. The committee is headed by Paul van Beukering and held its first meeting in March 2013.
Sources of law and applicable law
Article 24 of the Agreement provides for the sources of law that judges should base their decisions on:
- Union law, including the two regulations regarding the unitary patent
- Agreement on a Unified Patent Court;
- The European Patent Convention
- Other international agreements applicable to patents and binding on all the Member States
- National law
For the evaluation of which national law applies, regulations governing private international law -of which the Rome I and Rome II regulations form the corner stone- that are part of the law of the European Union as well as multilateral agreements are leading. As any court in the European Union, the decisions of the Court of Justice of the European Union are binding to the court.
Unified rules for infringement-exceptions
The Unified Patent Court agreement establishes several bases for the use of patented information without permission of the patent holder. These bases are applicable to European patents with and without unitary effect. The exceptions, given in Article 27, provide amongst others for:
- private and non-commercial use
- use on airplanes and ships of third states, while temporarily in the territory of a participating member state
- decompiling software covered by patented information
- breeding of patented material
Competence
The Unified Patent Court would have competence to hear cases regarding European patents with unitary effect (European patents for which "unitary effect" is registered with the European Patent Office) as well as for other European patents registered with countries for which the agreement is applicable. In the latter case of European patents without unitary effect during a 7-year transition period, cases may also be brought before national courts and proprietors of patents may opt out from the exclusive competence of the Unified Patent Court. Decisions would be valid for the full territory of the state where the patent is valid. Cases may concern patent infringement, revocation, declarations of non-infringement and establishments of damages. The proceedings include a counterclaim from the opposed party. The competence includes supplementary protection certificates.
The existing competences of the European Patent Office remain unchanged: A so-called opposition procedure dealing with the validity of the patent (but not with infringement) may also be brought before the European Patent Office during a 9-month period after the grant of the patent. Decisions by the European Patent Office are valid throughout the territory where the European patent is valid and may thus encompass 38 countries. Furthermore, countries may still grant their own national patents independently of the European Patent Office. Such patents are not litigated in the Unified Patent Court.
Legal basis
The Agreement on a Unified Patent Court establishes the court as a court of the member states. As a court established by treaty participating in the interoperation of European Union law, it bears similarities to the Benelux Court of Justice. An initial proposal, which shared many similarities with the proposed European Patent Litigation Agreement, and which included non-EU countries, was found to be incompatible with EU law by the Court of Justice of the European Union, as it would lead to a court not falling fully within the legal system of the European Union and thus without the possibility to ask prejudicial questions to the EU court of justice. As a result, the court was established by an intergovernmental treaty between the participating states outside the framework of the EU, but only open to members of the EU.
Signatures
The agreement was signed on 19 February 2013 in Brussels by 24 states: 23 states then participating in the unitary patent (all except Poland and Bulgaria), as well as Italy. It is open to any member state of the European Union (whether they participated in the unitary patent or not), but not to other parties to the European Patent Convention. Bulgaria signed the agreement on 5 March, after finalizing their internal procedures. Meanwhile, Poland decided to wait to see how the new patent system works before joining due to concerns that it would harm their economy. While Italy did not originally participate in the unitary patent regulations, it formally joined them in September 2015. Regardless of the outcome of that process, becoming a party to the UPC agreement will allow the court to handle European patents which are in force in the country. Spain and Croatia (which subsequently acceded to the EU in July 2013) are the only EU member states not participating in either the UPC or the unitary patent, although it is open to either of these countries to accede to the unitary patent system at any time.
Entry into force
The agreement will enter into force for the first group of ratifiers on the first day of the fourth month after all of the following three conditions have been met.
For signatories ratifying or acceding after the overall entry into force of the agreement, their membership shall take effect on the first day of the fourth month after the member state deposits its instrument of ratification or accession.
Activities before entry into force
For operations of the Unified Patent Court to commence, the agreement shall have entered into force, and practical arrangements have to be made. To this end, five working groups of the Preparatory Committee have been established to conduct the preparatory work. The Preparatory Committee indicated in March 2013 that early 2015 was a realistic target date for commencement of operations for the Unified Patent Court, but a Ministry of Economic Development statement in June 2015, indicated that the Preparatory Committee would publish an updated roadmap in September 2015, in which the UPC's commencement of operations would be postponed to "the end of 2016".
Pre-selection of candidate UPC judges took place in 2014, with the first training activities taking place in 2015.
Rules regarding representation before the court were approved in September 2015. They include the requirements for the European Patent Litigation Certificate (for which academic courses will be accredited), as well as equivalent certificates that will be accepted during a transition period. Patent attorneys with a law degree are exempted from EPLC.
The preparatory committee expects the rules of procedure, which are currently in their 15th draft, to be adopted in October 2015.
According to the Preparatory Committee's roadmap, the last testing phase of the courts operational IT system shall be completed in the fourth quarter of 2015. Getting the courts operational IT system up and running after a successful test phase, is expected to be the last deciding point for when the court can and will become operational. The contracts for this IT work to begin, were signed with 1 June 2015 as starting date.
- Provisional application
Discussions on a Protocol to the Agreement on a Unified Patent Court on Provisional Application were closed in September 2015. The protocol was signed by 8 states on 7 October 2015: Denmark, Germany (subject to ratification), Hungary, France, Luxembourg, Slovenia, Sweden, United Kingdom. Provisional application allows amongst others hiring of judges and moving to the court premises. Provisional application starts when 13 states (including Germany, France and United Kingdom) have ratified the Unified Patent Court Agreement, or when they have indicated to have finished their parliamentary process.
- Select committee
Beside completion of the work of the Preparatory Committee, the EPO Select Committee performs preparatory work for implementation of the unitary patent, to be "completed in due time before the entry into operation of the UPC", as unitary patent regulations apply from the date the UPC agreement enters into force. As of June 2015, the Select Committee expected to complete its work in Autumn 2015.
Ratification
In October 2013, European Council President Herman Van Rompuy stated that the "dream of a single patent still isn't fully fulfilled" and he "urged the EU's member states to ratify the agreement." However, the 2016 Brexit referendum result has cast doubt on the future of the UPC. A list of signatory countries is shown below including the status of ratification.
- Notes
Ratification notes
- Denmark
The Ministry of Justice in Denmark issued its opinion in May 2013 that a referendum, or 5/6 majority in the Folketing, was necessary for Denmark to ratify the agreement due to constitutional requirements on the transfer of sovereignty. The Danish People's Party and Red-Green Alliance, which controlled enough seats in the Folketing (22 and 12 respectively, or a little more than 1/6 of the 179 seats) to block ratification without referendum, stated that a referendum should be held. The People's Party said they would support the UPC if the governing parties promise to either hold a referendum on the proposed EU Banking Union or increase restrictions on the distribution of welfare benefits to foreign nationals in Denmark. After a parliamentary agreement could not be reached, a UPC referendum was held together with the EP election on 25 May 2014. The Danish constitution states that the referendum defaults to a 'yes', unless: at least 30% of all eligible to vote (not the votes cast) vote 'no' and more than 50% of the votes cast vote 'no'. The referendum resulted in 62.5% yes votes, leading to approval of the ratification act with a deposit of the instrument of ratification on 20 June 2014.
- Ireland
Ireland initially scheduled a referendum on a constitutional amendment required to ratify the agreement for the autumn of 2013, but it was subsequently postponed to an unscheduled date after the 2014 European Parliament election. The Irish minister responsible for the matter, Richard Bruton, confirmed in May 2014 that a constitutional referendum will be held, but the timing had not been decided by the government. The Irish government later revealed in its legislation programme, that it has planned to publish the required "Amendment of the Constitution" bill during the course of 2015, which will amend Article 29 of the Constitution to recognize the Agreement on a Unified Patent Court, and after parliamentary approval will be put to a referendum. In May 2015, the Irish Minister for Children and Youth Affairs stated his government did not plan for holding any referendums during the remainder of its legislative term, meaning the Irish referendum and UPC ratification would be postponed only to happen after April 2016.
- United Kingdom
In the UK, there is no requirement for a formal law approving of treaties before their ratification, the Ponsonby Rule requires they must be laid before Parliament with an explanatory memorandum, which the government did for the UPC Agreement on 23 June 2013. The Intellectual Property Act (IPA 2014) was approved by parliament and entered into force on 14 May 2014. Section 17 of IPA 2014 empowers the Secretary of State to make provision by order for giving effect in the United Kingdom to jurisdiction for the Unified Patent Court, provided that a draft of the order has been approved by Parliament. This means that ratification of the UPC agreement will not take place before parliament's approval of the related implementation orders. The first order, entitled "Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2015", was submitted by the government on 10 June 2014 for a technical review with a 2 September 2014 deadline for replies. The government presented the results of its technical review consultation in March 2015, and then on basis of this began the process to complete the final version of its draft order to the parliament. In June 2015, the UK Intellectual Property Office stated: "It is the Government’s intention for our domestic preparations [for ratification of the UPC] to be completed by Spring 2016." The Government laid the domestic implementing order before Parliament 21 January 2016. A second Statutory Instrument is needed to endorse the UPC Protocol on Privileges and Immunities, which the UK signed on 14 December 2016. The second Statutory Instrument will need to be finalized and laid before the Westminster and Scottish Parliaments, which will subject the Statutory Instrument to an affirmative procedure in order to complete the UK ratification of the UPC
- Isle of Man: In July 2013, the government of Isle of Man requested to be included in the UK ratification of the UPC agreement if possible. The UK government plans to extend the Unified Patent Court Agreement to the Isle of Man, and to cooperate with the dependency to apply the unitary patent there upon entry into force of the UPC agreement. According to Article 34 of the UPC Agreement, "Decisions of the Court shall cover, in the case of a European patent [without unitary effect], the territory of those Contracting Member States for which the European patent has effect". The European Patent Convention has been extended to the Isle of Man and all European patents valid in UK are currently also automatically valid in Isle of Man.
Amendment of the Brussels I regulation
A proposal for amendments of the Brussels I regulation was presented by the European Commission on 26 July 2013, and needed to be approved by the Council of the European Union and the European Parliament. By the votes 523 against 98, the Parliament approved an amended version of the amendment on 15 April 2014. The same amendment was adopted by the Council of the European Union in a Ecofin Council meeting on 6 May 2014, and formally entered into force on 30 May 2014 as Regulation 542/2014. Regulation 542/2014 amends the recast Brussels I Regulation 1215/2012, which is applicable from January 2015, and asserts that the Unified Patent Court has jurisdiction within the European Union if a contracting state to the Agreement would have jurisdiction in a matter regulated by the Agreement. It furthermore renders the jurisdiction rules applicable in cases between parties in one EU country and parties from a country outside the Union, a situation where normally national law, rather than EU law applies.
Legal challenges
Spain and Italy both filed individual actions for annulment of the unitary patent regulation with the European Court of Justice (CJEU cases C-274/11 and C-295/11) in May 2011, arguing the use of enhanced cooperation was improper and the introduced trilingual (English, French, German) language regime system for the unitary patent, which they viewed as discriminatory to other EU languages, would be non-compliant with the EU treaties because of distorting competition, causing a misuse of Council powers and functioning detrimental to the internal market. On 16 April 2013, CJEU rejected both complaints.
In March 2013, Spain filed two new actions for annulment (CJEU cases C-146/13 and C-147/13) of (part of) the two unitary patent regulations, arguing there is a "misapplication of the Meroni case law" in the delegation of administrative tasks to the European Patent Office, because its setting and distributing of renewal fees is not subject to the necessary EU supervision. The cases were subject to court hearing on 1 July 2014. Advocate-General Yves Bot published his opinion on 18 November 2014, suggesting that both actions be dismissed (ECLI:EU:C:2014:2380 and ECLI:EU:C:2014:2381). If the Spanish complaints would have been upheld by the Court this could have delaied or blocked the introduction of the unitary patent. The court handed down its decisions on 5 May 2015 as ECLI:EU:C:2015:298 and ECLI:EU:C:2015:299 fully dismissing the Spanish claims.
See also
- European patent law
- Enforcement Directive
Notes
References
External links
- Ratification progress with the depositary (Council of the European Union) and the European Commission
- L. McDonagh, 'Exploring perspectives of the Unified Patent Court and the Unitary Patent within the Business and Legal Communities' A Report Commissioned by the Intellectual Property Office (July 2014), available at UKIPO
- Website of the UPC Preparatory committee and the EPO select committee
- Agreement text on EUR-Lex and wikisource
- Rules of procedure, draft version 17 (published 31 October 2014)
- European Commission page on Patents ("Enhancing the patent system in Europe", "Community Patent", etc.)
- Unified Patent Court on the European Patent Office web site