Back in December we posted an in-depth Q&A about the unitary patent package, taking you on a whistle-stop tour of the unitary patent, the unified patent court, and what it might mean for patent owners and IP professionals.
Much of the picture remains the same, but there have been a few changes in recent months, and IPCopy has updated its Q&A for your reading pleasure. So, just in case you didn’t enjoy it enough the first time round, welcome to the Unitary Patent Q&A 2: The Update…
Q) What did I hear recently about a unitary patent for Europe? Don’t we already have a single European patent?
A) Currently, under the European Patent Convention (EPC) an Applicant can file a European patent application with the European Patent Office (EPO). This single European application is prosecuted, and hopefully granted, by the EPO, and retains the Applicant’s right to protection in any of the EPC-contracting countries. Once granted, the European patent is validated in your choice of EPC-contracting countries, where it essentially becomes a bundle of national patents. An Applicant might typically choose between 3 and 10 countries for validation. Each national patent stands and falls independently of the others, and each must be litigated separately in the relevant national court.
In December 2012, the European Parliament approved the formation of ‘A European Patent with Unitary Effect’ (often referred to as a unitary patent or an EU patent), and a Unified European Patent Court to oversee its enforcement. An Applicant will be able to file a European patent application in the same way as before, and up to grant the process will remain the same. After grant, an Applicant will be able to choose between two options: either validation of the patent in separate countries in the same way as before, or the new unitary patent (possibly with some validations in countries not covered by the unitary patent if required).
The unitary patent will most likely have effect in twenty-four* ‘member countries’. After grant, a single renewal fee will be payable to cover all twenty-four countries, and the unitary patent will be revoked, maintained, assigned or amended centrally, with effect in all twenty-four countries. Once initial transitional provisions have ended, whichever option the Applicant selects, litigation will be in the unified patent court.
(*the number of countries ought to be simple, but is in fact quite complex, and may change. Twenty-four looks to be the likely number for now, but the exact number may change. For now, Poland has opted not to sign the Agreement, although it could do at a later date bringing the total to twenty-five, and during the ratification phase the unitary patent system can move ahead with just thirteen countries**, but we’re getting ahead of ourselves!)
Q) What is the legislation involved?
A) Three key pieces of legislation were approved in December 2012 to set up the unitary patent and the unified patent court.
1) 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 (‘The Regulation’) – here. This legislation makes the unitary patent possible. Twenty-five of the twenty-seven EU countries are named in this legislation (all current EU countries except Italy and Spain), and, for now at least, a unitary patent will only be possible in these twenty-five countries.
2) 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 – here. This sets out the language provisions relating to the unitary patent.
3) Agreement on a Unified Patent Court (‘the Agreement’) – here. This sets up the Unified Patent Court, which will have jurisdiction over unitary patents and over validated European patents in any countries that are signatory to the agreement. At the moment, twenty-five countries have signed the Agreement (all current EU countries except Spain and Poland), and the Agreement must now be ratified.
In addition to this legislation, the Rules of Procedure of the Unified Patent Court will need to be established (‘the Rules’). These are currently in draft, and at the time of writing a public consultation is imminent. A copy of the fourteenth draft of the Rules of Procedure is available here.
Some other pieces of EU legislation are tied in to the Unified Patent Package. It has now been confirmed that an amendment to the Brussels I Regulation will be necessary to give the Unified Patent Court jurisdiction, and this process is already underway.
You might have noticed that Spain, Italy and Poland have opted out of the Regulation, the Agreement, or both. See below for further details of the implications of this.
Q) When will this come into force?
A) This isn’t as simple a question as you might think! In theory, the earliest date the unitary patent and unified patent court might come into force is 1 January 2014. In practice, there are some legal hoops to be jumped through first.
Firstly, the Regulation will only take effect once the Agreement has been ratified by Germany, France the UK and ten other countries that are signatories of the Agreement (notably, one of these could be Italy, even though Italy won’t actually partake in the unitary patent itself). Secondly the Brussels I Regulation must be amended and enter into force.
Early 2015 is generally cited as the most likely timescale for grant of the first Unitary Patent.
Q) So, does that now mean I can just have a single patent to cover all of Europe?
A) The short answer is: nearly, but not quite! To be a member country of the unitary patent that country must be a member of the EU, and not all of the EPC-contracting countries are EU members. Of those that are EU members, twenty-four intend to support a unitary patent (all except Italy, Spain and Poland), and as each country ratifies the Agreement, it will be covered by a unitary patent.
To highlight some of the finer details: Poland was initially on board with the Unitary Patent, and is named in the Regulation. However, it has now opted not to sign the Agreement, and does not intend to partake in the Unitary Patent. It could still sign and ratify the Agreement at a later date, but has no immediate plans to do so.
Spain and Italy have opted out of the Regulation altogether for now, and so a unitary patent will not cover Spain or Italy. These two countries could join the unitary patent scheme in due course. Italy has, however, signed the Unified Patent Court Agreement, which means that although a unitary patent will not have effect in Italy, the Unified Patent Court will have jurisdiction over the Italian part of a European patent validated in Italy.
Non-EU countries cannot sign up to the unitary patent (unless, of course they join the EU). Croatia, for example, which is due to join the EU in 2013, could sign up to the unitary patent once it becomes an EU member.
The table below summarises who’s in, who’s out, and who might be in one day:
Q) I don’t need protection in all twenty four of those countries – can I still only choose to have an ‘old-style’ European patent and validate it in only a few countries?
A) In short, yes. Once a European patent has been granted you can choose whether or not you would like a unitary patent. As an alternative to the unitary patent, you can choose to validate your European patent in only your chosen countries (for example, validating only a few countries, such as France, the UK and Germany).
However, if you select the validation route, the patent will not be exactly equivalent to the bundle of national rights that you would get under the current system: the main difference will be that under the new system (and once the transitional provisions have passed), litigation in respect of the member countries will be at the unified patent court, rather than the national courts.
Q) What do I do if I want a unitary patent, but I also want protection in a non-member country like Italy or Switzerland?
A) In this case, you must request a unitary patent, and you must also validate the patent in the countries that are not covered by the unitary patent. For example, you might request a unitary patent, and also validate the European patent in Italy and Switzerland.
Q) Can I opt out of this whole EU patent thing but still get patents in European countries?
A) If you want to avoid using the unified patent court altogether, you can file national applications in the individual European countries of your choice.
Q) Would national patents be a better option?
There are advantages and disadvantages to this option.
Depending on the countries that you select, national filings may be more costly. A European application can be filed in English, and no translations are required until grant. When filing separate national applications, translations of the application into the official languages of the relevant countries will be required on, or shortly after, filing, so the initial filing costs will be higher. You will also need to prosecute each national application separately, which will involve more effort and will most likely increase prosecution costs.
The eventual granted patents could well be of differing scope in each country. This could be advantageous; some countries have a lower threshold for inventive step, and so may allow broader protection than would be permitted by the EPO.
The main advantage will be that each national patent will stand and fall independently of the others. This means that if the patent is revoked or amended in one country, patents in the remaining countries will be unaffected. It also means that you can choose to allow a patent in a less significant country to lapse, for example to reduce renewal fees later in a patent’s life, whilst maintaining patents in the more important countries.
Something to watch out for: not all European countries permit national-phase entry of a PCT application.
Q) Wait, so that’s three different options for patent protection in Europe?
A) That’s right – you can choose from 1) separate national phase filings, 2) a new ‘European patent with unitary effect’, and 3) a European patent validated in your choice of countries. You might also choose a combination of these three options.
Here are the key differences in a handy tabulated form1:
1Note that the above table assumes the position after the transitional provisions have expired
Q) When will I need to decide which option to take?
A: If you would like to pursue separate national applications you should begin talking to your patent attorney about your filing strategy before the end of your twelve-month priority period. In some European countries (France, for example) a national application must be filed within the twelve month priority period. Other countries will allow national-phase entry from a PCT application at 30 or 31 months from priority.
If you would like to obtain either a validated European patent, or a unitary patent, you will need to file a European patent application: either within the twelve month priority period, or via a PCT application within 31 months of the priority date.
If you would like a unitary patent, you must request it within one month of grant of the European patent. If you would like to validate the patent in any European countries (this could be instead of, or in addition to the unitary patent), this must be done within three months of grant of the European patent.
Q) How much will it cost?
A: The costs of filing and prosecuting a European patent to grant will remain broadly the same as they currently are.
The cost of requesting and ‘validating’ a unitary patent is currently unknown, as are the renewal costs – IPCopy will be keeping you posted on any developments.
Q) I saw an article that a unitary patent would cost 980 Euro. Is this true?
A: Sadly, no. There was a press release from the EU Parliament that misquoted the figure for obtaining a unitary patent as 980 Euro (now corrected!). The costs will in fact be significantly more, and will include attorney costs on top of any official fees.
Q) What language will the application need to be filed in?
A) As in the current system, the application can initially be filed in any language, but if it is not in English, French or German it must be followed by a translation into one of those languages shortly after filing.
For small and medium-sized enterprises (SMEs) that have their residence or principal place of business in a country having an official language other than English, French or German, reasonable translation expenses will be reimbursed.
Q) I’ve heard something about the EPO using machine translations for the unitary patent – can that be right?
A) It appears that the EPO intends to develop tools for providing “high-quality machine translations”, with a view to publishing machine translations of the texts of patent applications into every official language of the EU. The intention is that these will serve for information purposes only, and will not have legal effect. IPCopy awaits these “high-quality machine translations” with interest.
Q) So what will happen while these tools are being developed?
A) Until these “high-quality machine translations” are available, if the application is filed in French or German the Applicant must supply a translation into English when a request for a unitary patent is filed, and if the application is filed in English the Applicant must supply a translation into an official language of a member state.
The English translation will be published by the EPO, so that it will be publicly available. After the “high-quality machine translations” have become available and this requirement has been lifted, the Applicant may still choose to supply an English translation voluntarily, which the EPO will publish.
Q) Will any further translations be required?
A) No further translations will be required for a unitary patent during prosecution or grant.
However, further translations will be required if you select the national validation route. For example, if you choose to validate in Italy, a full translation into Italian will be required.
Q) How and when will I pay renewal fees for a granted unified patent?
A) A single yearly renewal fee will be paid at the EPO for a unitary patent. The cost has not yet been decided, but the rumours are that the renewal fee might be equivalent to around 3 or 4 countries under a current European Patent, so it could be upwards of 1000 EURO per year.
Q) That’s a lot – any way to get a discount?
A) There are indications that a reduced renewal fee will apply to small and medium-sized enterprises (SMEs). A reduced fee will also be available if a licence is available as of right.
Q) Can I allow a unitary patent to lapse in some countries and maintain it in others to reduce the renewal costs?
A) No. A unitary patent will only be able to lapse in all of the participating states at once.
Q) What’s the unified patent court?
A) The unified patent court (UPC) will be set up to enforce both unitary patents and European patents validated in those EPC countries that have signed and ratified the UPC Agreement.
The unified patent court will include a Court of First Instance split between Paris, London and Munich, and a Court of Appeal located in Luxemburg.
The Court of First Instance will include a central division, and local and regional divisions.
The central division will be split between a seat in Paris and divisions in London and Munich. The London section shall deal with cases on the matters of ‘Human necessities’ and ‘Chemistry and metallurgy’, the Munich division will deal with cases relating to ‘Mechanical engineering, lighting, heating, weapons, blasting’, and the Paris seat will deal with remaining cases.
There will be up to four local divisions in countries having more than 100 cases a year, and regional divisions to cover groups of countries that, individually, would have fewer than 100 cases a year.
Q) So where will I need to bring an action?
A) If a patentee wishes to bring an infringement action in respect of a European patent or a unitary patent, the action must be brought at the local division (or regional division if there is no local division) in either i) the country in which the alleged infringement has occurred or ii) the country in which the defendant is domiciled or established. If there is no local or regional division, the action must be brought at the central division. The parties can also agree between themselves where an action should be brought.
Q) Will infringement and validity be heard in the same court?
A) It depends – if a defendant counter-claims for invalidity, the local or regional division hearing the infringement action may choose to keep both the infringement and validity proceedings in the local division, they may refer only the invalidity proceedings to the central division and either stay or continue with the infringement proceedings, or they may refer both the infringement and validity proceedings to the central division. The upshot of this is that the infringement and invalidity proceedings could play out in different divisions.
Q) Will people be able to file oppositions against an EU patent?
A) Yes, the procedures for prosecution, grant and post grant opposition are the same for a unitary patent as they would be for a European Patent.
Existing patents and applications:
Q) How will this affect my existing granted European patents?
A) Once the unitary patent comes into effect, for member countries of the UPC Agreement, the unified patent court will be able to deal with litigation in relation to any European patent, including those already granted. The default position will be that the UPC will have exclusive competence over any existing rights.
However, if you have a European patent that has already granted, you will be able to choose to opt the patent out of this exclusive competence if you wish, so that litigation can take place in the national courts, rather than at the UPC. This opt out will be on a patent-by-patent basis, and you will be able to opt the patent out at any time up to one month before the end of the transitional period (initially set at 7 years, but potentially extendible by a further 7).
If later down the line you want to change your mind, you will be able to opt back in again. However, if you do not choose to opt out within the window, there will be no option to opt out at a later date.
There are rumours of a possible opt-out fee, although the position on this is not yet certain.
Q) How will this affect my existing pending European patent application?
A) If your pending application is granted before the unitary patent comes into force then it will be treated as described in the answer above.
If it is granted after the new provisions have entered into force (most likely from early 2015) you will have the option to select the unitary patent if you wish. If you choose not to select the unitary patent, then opt-out provisions described above will apply.
This means that if you have a currently-pending application and you desperately want a unitary patent, you might try to find some ways to delay its grant for another year!
Q) What about a patent application filed during the transitional period?
A) At the end of the transitional period the same opt-out will apply to any patents that were filed during the transitional period. The transitional period will last until at least 1 January 2020, and potentially until 1 January 2027, which means that it will be a long time before the unified patent court becomes truly unavoidable.
Q) What’s this got to do with software patents? (see this BBC article)
A: Nothing at all. Unfortunately, IP is often poorly reported in the media, and this is no exception. Software patents are not relevant to the unitary patent, and shouldn’t have been mentioned. This article missed a good opportunity to focus on pros and cons of the unitary patent system from the perspective of industry and the profession.
Emily Weal 10 April 2013