JURIST Guest Columnist Ewelina Kemp of the University of Pittsburgh School of Law discusses the recent developments of Patent Law in the European Union…
Fall 2015 appears to be a prominent time for European Patent Law. On September 30, 2015 Italy formally became the twenty sixth EU state member involved in the enhanced cooperation on the Unitary Patent (UP). The next day, on October 1, seven EU member states signed the Protocol on the Provisional Application of the Agreement on the Unified Patent Court. This Protocol is a milestone towards the realization of a unitary patent for Europe. The European Union’s “unitary patent package” legislation, introduced under the EU’s legislative procedure of “enhanced co-operation” and passed by the European Parliament in 2012, is the most substantial change in European patent practice in over 40 years. This legislation fundamentally changes the way patents are granted and enforced in the European Union. The aim of the reform is to simplify the existing system and intensify a cost effective patent protection and dispute settlement.
How does the European patent system work now?
Presently, patent protection can be granted through two separate legal channels; under the European Patent Convention and the Patent Cooperation Treaty [PDF]. The first option is to apply for a national patent protection through respective national patent offices. The downside of the ” national path” is the limitation of protection only to the respective granting member state. The alternative to the “national path” is the European Patent (EP) [PDF]. This name might be misleading since the EP is not a uniform IP right. Thus, once the EP is granted through the European Office, it still must be validated by national patent offices. As a result, the EP is a package of national patents. Consequently, in case of patent infringement, the only available option is to bring a lawsuit before national courts in each of the relevant countries. This solution is as inefficient as it sounds. It not only incurs significant costs for the parties but also might result in conflicting decisions.
What does the Unitary Patent System (UPS) bring to the table?
The “patent package” consists of a Regulation creating an European patent with unitary effect,a regulation on languages applicable to the unitary patent and an Agreement on the Unified Patent Court. The Unitary Patent (the full name the European patent with unitary effect) will be an option to national patents and to the current European patent. The major difference to the already existing European patent is that the UP is designed as one single right which will be effective and enforceable across the contracting countries (all EU members except Spain, Poland and Croatia). The UP will be managed by the European Patent Office (“EPO”). The applications are to be submitted in the same way as for classic EP, but an applicant is to elect whether the patent is to have unitary effect ( a request for unitary effect) [PDF]. As a result, an applicant will be able to obtain patent protection in 25 Member States of the EU by one single request.
The Unified Patent Court.
Another significant change is the establishment of the Unified Patent Court (UPC), which will have the exclusive jurisdiction over disputes relating to the UP. Also, to some extent, the UPC will gain jurisdiction over the “classic” EP. The court will be comprised of the Court of Appeal (seated in Luxembourg) and a Court of First Instance, which will be divided into a Central Division (seated in Paris, London and Munich) and a Regional Division. The competence of the divisions is defined by the UPC Agreement [PDF]. Article 33 of the agreement provides that the actions for or relating to “infringement, provisional and protective measures and injunctions, damages or compensation derived from provisional protection and/or prior use” shall be brought before the regional division where the infringement has occurred, or where the defendant has residence or place of business. As a rule, but with some exceptions, actions for revocation or non-infringement shall be brought before the central division. The UPC will be a court common to the contracting States and thus will be obligated to request for preliminary rulings on the interpretation and application of EU law to the European Court of Justice ( Article 267 of the Treaty on the Functioning of the European Union ).
The transitional period and the “Opt-out” scheme.
The UPC Agreement (Article 83) establishes a seven-year transitional period for classical European patents (although it may be prolonged up to seven more years), during which the actions for patent infringement may still be brought before national courts. Farther along the transactional period, the patent holder may declare an “opt-out” from the jurisdiction of the UPC and thus direct the patent infringement to be decided by the national courts.
Forum shopping during the transitional period.
Since the detailed rules governing the transactional period and the functioning of UPC are yet to be established, it is hard to predict how the new system will function in practice. However, some aspects of the unified patent system already raise speculation of possible practical application. One of the frequently raised issues is forum shopping during the transitional period; when the patentee may choose between exclusive jurisdiction of the UPC and jurisdiction of respective national courts (the “opt-out” scheme). Further, the use of one forum does not preclude the use of others, thus patents holders may use parallel national proceedings or opposition proceedings before the UPC. Hence forum shopping in the EU might have its role increased as a strategic legal tool in European patent litigation.
When may we expect the new system to come into effect?
Since December 2012 the process of ratification of the Unitary Patent Package is ongoing. The package will come into effect when 13 countries ratify the Unified Court Agreement, including the UK, France and Germany. The current information about the signature of the agreement can be found here. It is hoped that the first unitary patent could be seen as early as the beginning of 2017 (according to the current timetable).
Ewelina Kemp is a LLM student at the University of Pittsburgh School of Law. She is admitted to practice in Poland. Before coming to the US she worked as a transactional lawyer for Ernst & Young. She also studied Chinese commercial law, including IP law at the Xiamen University School of Law in China.
Suggested citation: Ewelina Kemp, A Few Steps Closer to the European Unitary Patent System, JURIST – Student Commentary, Nov. 9, 2015,