Business Law & Compliance

"Early 2015" is a "realistic target date” for a unitary patent framework

6 min read

17 December 2014

In a document published by the Presidency of the EU's Council of Ministers in November 2013, “it was decided that early 2015 would constitute an ambitious but realistic target date” for a unitary patent framework to be set up.

It was in that same document that the Presidency concluded that a new unified patent court (UPC) system, which would be designed to resolve disputes around unitary patents, could be operational in 2015.

Under these rules, which were backed by EU ministers in 2012, businesses will soon be able to obtain patent protection across most EU countries (those that sign up to the scheme) via a single application, hence protecting their monopoly over their inventions. And successful patents will initially be published in English, French and German. Applications will be translated free of cost for those who need it.

It said a select committee had been working on addressing “the financial and budgetary aspects of the implementation of the unitary patent protection”, which would specifically look into “the level and the distribution of the renewal fees, the budgetary aspects of the tasks entrusted to the EPO and the implementation of the compensation scheme for the reimbursement of translation costs”.

The committee was due to complete this task by June 2014.

At the same time, the Preparatory Committee has been working on creating the actual framework.

“To date the Preparatory Committee has, among other issues, established its Roadmap, launched a pre-selection procedure for future judges of the UPC, launched a public consultation on the draft Rules of Procedure of the UPC and discussed the financing of costs arising in the preparatory phase,” the Presidency said.

Backed by most EU countries in 2013, plans have been made to make London the base for a new central division of the unified patent court, responsible for all pharmaceutical patent disputes.

“The decision that London should host this new court shows not only the confidence in our legal sector but also the strength of the UK’s intellectual property regime,” said Business Secretary Vince Cable. “Agreement on a unified patent regime is a good result as it will mean defending a patent across Europe will now be much simpler.

“The agreement will help our inventors who can in future spend more time on research and development, producing new ideas and less time filling in forms and defending their patents in court. We estimate benefits to the UK of around £200m a year.”

So far, Spain and Poland have declined to sign the agreement.

And many MPs have warned that a unified patent court system could lead to forum shopping, whereby parties which choose countries to take legal action in based on where they think they would be most likely to win.

“Forum shopping is a serious concern to all parties who will be using the unified patent court, especially when combined with the potential bifurcation of infringement and validity proceedings,” said Deborah Bould of Pinsent Masons.

“Most consumer electronics devices use multiple technologies which, in turn, are protected by a sea of patents. There is a real risk of patent hold up for technologies not based on standards, like touch screen technology. Proceedings for any single patent can prevent exploitation of the technology as a whole.

“It is inevitable that certain local and regional courts will be subject to more patent proceedings than others and so will have delays in hearing cases,” she said.

“The danger of bifurcation is that a party could be prevented from selling their product across all the 25 contracting Member States by a local or regional division of the unified patent court, whilst they seek to prove that the patent preventing them from engaging in those business activities is invalid before a central division of the court,” Bould added.

“The volume of cases before the central division of the unified patent court is likely to make validity proceedings slower than the infringement proceedings. So, in instances where a patent is ultimately found invalid, a party has been unduly prevented from continuing their business activities. Ultimately it is local or regional divisions that will decide whether to bifurcate the proceedings, another area in which forum shopping might occur. Any guidance in the unified patent court’s Rules of Procedure that severely restricts bifurcation would be welcome,” she said.

A new EU regulation has been published in the trading bloc’s official journal and changes existing laws on the jurisdiction of courts and recognition of their rulings. The changes mean that the judgments of new UPCs in dealing with disputes over unitary patents can be issued from 10 January next year.