European Patent with Unitary Effect and the Unified Patent Court May 2013 Dr Lee Chapman lchapman@jakemp.com www.jakemp.com Where are we? Regulations relating to the EPUE and translation arrangements were published in OJEU 31 st December 2012, Entry into force 20 th January 2013 Not effective until Court Agreement enters into force Agreement relating to Unified Patent Court was signed on 19 February 2013 (but not by BG, PL and ES) Agreement will enter into force when Court Agreement ratified by 13 states including DE, FR, GB Entry into force 1st January 2014, or 1st day of 4th month after 13th ratification 1
What is an EPUE? EPUE provides uniform and equal protection in all participating states Can be enforced by a single infringement action across all participating states Can be revoked in a single action across all participating states Who s In and Who s Out? EPUE effective in 25 EU participating states (blue) Spain and Italy (red) are not participating (and have challenged the process in the CJEU) EPUE not effective in non-eu states, e.g. CH, TR, NO (dark red) Non-unitary patents through EPO will remain available 2
The Procedure in the EPO National validation as now File application Search Examination Grant Application and opposition procedures unaltered Elect EPUE Option of electing EPUE for participating states within one month of grant Which EP applications are affected? New procedure will be applicable to EPO applications which are pending when it comes into force. New procedure will be applicable to EPO applications filed when it comes into force. New procedure may potentially be used for some applications being prosecuted in the EPO now. 3
Renewal fees Single renewal fee payable (instead of separately in each state) Level of fees to be set with the aim of allowing all participating participating states to keep their current renewal fee income while at the same time ensuring that those participating states which currently have a low renewal fee income will significantly increase this income Translation requirements The eventual aim for the EPUE is that no further translations will be required beyond those required by the EPO before grant Transitional provisions will apply until high quality machine translations are available Transitional provisions lapse 12 years from commencement, or earlier if high quality machine translations are available for all official languages of the EU. When electing EPUE a full translation of the patent specification into any other official language of an EU member state is required, where the EPO prosecution was in English If the EPO prosecution was in French or German, a full translation of the patent specification into English is required File translation within one month of grant Translation shall be for information purposes only; according to Recital 12 such translations should not be carried out by automated means 4
Translations in legal proceedings In the case of an alleged infringement, the patent proprietor shall provide, at the choice of the alleged infringer: a full translation of the patent into the language of the participating member state in which the alleged infringement took place; or a full translation of the patent into the language of the participating member state in which the alleged infringer is domiciled In the course of legal proceedings the patent proprietor shall also provide a full translation of the patent into the language of the proceedings of the court Provisions Defining Infringement of Unitary Patent Protection 5
Removal of Articles 6 to 8 In December 2012, the European Parliament approved a Regulation removing Articles 6 to 8, defining infringement for an EPUE, substituted by new Article 5 Article 5 says (in effect) that infringing acts are defined by the national laws that apply to patents as objects of property Intention was to avoid the referral of questions relating to patent infringement or validity to the CJEU Will that be achieved? Infringement now defined in Articles 25-27 of the Court Agreement Article 5 1. The EPUE 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 states in which it has unitary effect, subject to applicable limitations 2. The scope of that right and its limitations shall be uniform in all participating states in which the patent has unitary effect 3. The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating state whose national law is applicable to the EPUE as an object of property in accordance with Article 7 6
Article 7 Which national law applies? 1. An EPUE shall be treated in all the participating Member States as a national patent of the participating Member State in which, according to the European Patent Register: (a) the applicant had his residence or principal place of business on the date of filing; or (b) where point (a) does not apply, the applicant had a place of business on the date of filing 3. Where no applicant had his residence, principal place of business or place of business in a participating Member State the EPUE shall be treated as a national patent of the State where the European Patent Organisation has its headquarters in accordance with Article 6(1) of the EPC - German law will apply by default where the patentee has no EU domicile - How much difference will the national law make? - Infringement is defined in the Court Agreement - Under Art 69 EPC the scope of protection should be uniform For joint patentees the order in which they are named can be significant Unified Patent Court Agreement 7
Jurisdiction of Unified Patent Court Unified Patent Court will have exclusive jurisdiction for EPUEs Unified Patent Court will have non-exclusive jurisdiction for Non- Unitary Patents during a transitional period (at least 7 years) Unified Patent Court will have exclusive jurisdiction for Non-Unitary Patents after the transitional period Unified Patent Court will also have jurisdiction for SPCs The Court Structure Appeal Court (Luxembourg) Central Division Local/Regional divisions Local/Regional Divisions - Will consider infringement issues - May consider validity or may refer to the Central Division - Will operate in the local language 8
The Central Division Central Division London chemistry, pharmaceuticals, biotechnology Paris electronics, software, physics Munich mechanical engineering Central Division will be concerned primarily with matters of validity rather than infringement In some circumstances may hear infringement Will operate in the language of the patent Actions for infringement Actions for infringement shall in general be brought before the Local (or Regional) Division where the infringement has occurred, or where the defendant has his residence or place of business Forum shopping - where there has been alleged infringement in more than one EU state, a patentee claimant is likely to have a choice of Local (or Regional) Divisions where he can proceed In some circumstances, actions may be brought before the Central Division. 9
Other actions Actions for revocation or a declaration of non-infringement shall be brought before the Central Division If a counterclaim for revocation is brought in an infringement action before the Local (or Regional) Division, the Court shall have discretion to: (a) hear both the infringement and revocation together (as is the case in many EU states); or (b) refer the revocation counterclaim to the Central Division and suspend or proceed with the infringement proceedings (as currently happens in Germany) With the agreement of the parties the whole case (both infringement and validity) can also be referred to the Central Division. Bifurcation Possibility for bifurcation in which a Local (or Regional) Division of the Court hears infringement and the Central Division hears revocation Potentially these Divisions could hear these issues in different languages Eg if an action is brought in a German local division on a patent in English, then infringement will be heard in German in the German Local Division and validity in English at the Central Division Concerns about bifurcation But, how likely is bifurcation to happen? It will be discretionary, not obligatory as it is in the Germany Local court would have to consider whether there is a high likelihood that a patent would be invalid on any ground before granting an injunction Would a local division in say Germany want to send validity on a pharma case to London or an electronics one to Paris? 10
Pros and Cons of the Proposed Unitary Patent Pros Cheaper for getting protection in lots (>8-10?) countries Patentee can stop infringement in all 25 countries in a single action Invalid patents can be knocked out in all 25 countries at once The central division and the appeal court may attract the top patents judges in Europe Cons More expensive for getting protection in a small number of countries Patentee can lose patent in all 25 countries in single action Bifurcated actions could lead to injunctions against infringers before validity is challenged may favour trolls and locating business outside EU The judges in some local divisions and the CJEU will be inexperienced with patents Non-Unitary European Patents 11
Transitional Provisions Patent Court will have jurisdiction for non-unitary patents - initially nonexclusive but later exclusive Under Art 83 transitional period of 7 years (which may be extended by a further 7 years) from commencement During transitional period an action for revocation, infringement or declaration of non-infringement may be brought before the national courts During transitional period patentees may file an opt out from the exclusive competence of the Unified Patent Court. Presumably an opt-out prevents an action for revocation being filed in the UPC An opt out can be revoked later Revocation Actions An action for revocation would be heard by the Central Division. What would its effect be? Art 34 says Decisions shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect Presumably multiple actions for revocation in different states will be considered together Ultimately the only way to avoid the jurisdiction of the Unified Patent Court will be to file patent applications through national patent offices rather than the EPO 12
Any Questions? 13