Preparing for the Unified Patent Court

Site of the London Section and UK Division of the Unified Patent Court

Aldgate Tower | Location Flythrough from J2 Agency on Vimeo.

On 28 Jan 2016 I shall give a talk to the CIPA Merseyside Meeting entitled Preparing for the UPC. I will give another presentation in my chambers on 4 Feb 2016 entitled Unitary Patent and Unified Patent Court. The reason I shall give those talks is that the Unified Patent Court ("the UPC") is likely to come into being in the next few months which will in turn enable the European Patent Office to grant its first European patents with unitary effect ("unitary patents") for the territories of those countries that ratify the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement"),

When will the UPC come into being?

Art 89 (1) of the UPC Agreement provides that it will come into force:

"on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including 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 or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest." 

So far, nine countries have notified their ratification or accession to the UPC Agreement including France, which is one the three member states with the highest number of European patents in force in 2012 (see the ratification details page on the Council website). The United Kingdom, another of the three, has passed primary legislation to enable the UK to ratify the agreement (see s.17 of the Intellectual Property Act 2014). The government has recently responded to to replies to a Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent (see Government Response to the Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent of 14 Jan 2016). It has also taken a lease to space in Aldgate Tower for the London section of the Central Division and the British Division of the Court of First Instance. Germany, the last of the three, is thought likely to ratify the UPC Agreement in September (see the interview of Wouter Pors of Bird & Bird by the Kluwer UPC News blogger on January 4, 2016, 2016: Countdown to the start of the Unified Patent Court Kluwer Patent Blog).

Effect of the Unitary Patent and the UPC

For many years the cost of patent prosecution in Europe has been considerably higher than in the USA or Japan (see Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2005 NIPC Inventors' Club) and the cost of enforcement in the UK higher still.  In Why IP Yorkshire I wrote:

"According to the British government's own (but now disbanded) Intellectual Property Advisory Committee, it can cost over £1 million for an infringement action in the Patents Court and even £150,000 to £250,000 for the Patents County Court compared to no more than €50,000 in France, Germany and the Netherlands (see the table at page 50 of IPAC "The Enforcement of Patent Rights" published on 18 Nov 2003)." 

There has been progress with the London Agreement (Agreement on the application of Article 65 of the Convention on the Grant of European Patents) Official Journal EPO 12/2001 550, the new Patent County Court Rules and the introduction of the Small Claims Track but patent protection in Europe is still significantly more expensive than in the USA and Japan and patent litigation in the UK more expensive than in most of the rest of Europe. The unitary patent should reduce considerably prosecution and maintenance costs in Europe and the UPC will level the playing field for British litigants. That is why Hargreaves urged the UK to "attach the highest immediate priority to achieving a unified EU patent court and EU patent system, which promises significant economic benefits to UK business" (page 25 of Digital Opportunity A Review of Intellectual Property and Growth May 2011).

What is the UPC?

The UPC is neither a European Union court like the Court of Justice of the European Union nor a national court like the Patents Court or the Intellectual Property Enterprise Court but a legal hybrid.  It is a self-contained legal system with its own substantive and procedural law shared by the EU member states that ratify the UPC Agreement. Immediately it will share jurisdiction with national courts over infringement and revocation claims relating to European patents designating individual countries and exclusive jurisdiction over such claims relating to European patents having unitary effect. Eventually it will have exclusive jurisdiction over infringement and revocation claims relating to all European patents leaving national courts only with jurisdiction over national patents and property and other ancillary issues relating to European patents. The UPC will consist of a Court of Appeal and Registry in Luxembourg and a Court of First Instance with its seat in Paris and sections in London and Munich and local and regional divisions elsewhere in the contracting member states.

Substantive Law

In addition to the European Patent Convention, much of which is already imported into the laws of the constituent parts of the United Kingdom by the Patents Act 1977, the states that ratify the UPC Agreement become bound by Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 31.12.2012 L 361/1), Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (OJ 31.12.2012 L 361/89) and of course the UPC Agreement.

The Regulations set out the framework for the substantive law and the UPC Agreement fills in the details. For instance, art 5 (1) of Regulation 1256/2012 provides:

"The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations." 

That provision is supplemented by art 25 of the UPC Agreement:

"A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent." 

The following articles prohibit indirect infringement and provide for limitations and exceptions to the monopoly.

Procedure

The UPC Agreement outlines the procedure, the composition of the judiciary and the remedies and these are supplemented by a comprehensive set of Rules of Procedure which have been drafted by a Preparatory Committee of representatives of all the contracting EU member states. Those Rules are likely to be submitted for public consultation shortly. Interestingly art 71 (1) of the UPC Agreement provides for legal aid for natural persons who are unable to meet the costs of proceedings, either wholly or in part.  As I helped to set up, and chaired, the Leeds, Liverpool and Sheffield inventors groups for many years I shall be taking a close interest in that provision and its implementation in the Rules of Procedure. It is also a consideration for patentees when considering an opt-out.

Further Information

This is the first of a series of articles that I shall be writing on the unitary patent and UPC over the next few weeks.   If anyone wishes to attend my presentation on 4 Feb 2016 or obtain a copy of my slides and handout afterwards, he or she should call Steve Newbery on 020 7404 5252 or email my clerks.

Further Reading

Date	Author	Title	Source
	Preparatory Committee	An Enhanced European Patent System	UPC website
23 Jan 2016	Jane Lambert	Legal Aid for the IPC	NIPC Inventors
26 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	IP North West
5 Feb 2016	Jane Lambert	Unitary Patent: UPC's Power to Amend	NIPC Law