As we previously reported (here), Italy signed the unified patent court (UPC) agreement on 19 February 2013. This means that there are 25 countries (out of a possible 28) who are signed up to the UPC agreement (Spain, Poland and Croatia have not currently signed).
Italy, of course, is not part of the enhanced cooperation regulations that the unitary patent itself will be delivered under. If Italy, along with the other required countries, end up ratifying the UPC agreement and the unitary patent package comes into effect, Italy will be part of the court system but unitary patents will not have effect in Italy.
That couldn’t possibly cause any issues, could it?
According to Article 3(2) of the unitary patent regulation 1257/2012 (here) :
A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States.
It may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States.
Article 34 of the unified patent court agreement states:
Territorial scope of decisions
Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.
These two clauses together confirm that if a patent grants as a unitary patent then it will stand or fall across the whole of the unitary patent area and if a patent grants in the traditional sense as a bundle of nationally validated EP patents then a decision of the unified patent court relating to one particular EP(national) patent will cover all the EP patents in the bundle.
In the case of a patent being revoked by the unified patent court, it won’t matter if it is a unitary patent or a “traditional” EP patent – the patent should fall in all territories that the court covers.
But what of Italy? Consider the following scenario.
- An EP patent grants and the patent owner selects a unitary patent and also decides to validate in some of the countries not covered by the unitary system (including Italy);
- An action, in respect of the unitary patent, is brought before the unified patent court;
- The defendant successfully pursues a validity attack against the patent;
- The unitary patent is revoked.
What happens, however, to the EP (IT) patent? It is not revoked by virtue of Article 3(2) of the regulation because Italy is not part of the enhanced cooperation regime. It is not apparently revoked by virtue of Article 34 of the UPC agreement because that article refers to a “European patent” and not a “European patent with unitary effect”.
So, it seems that the EP patent that was validated in Italy escapes the validity attack. Presumably, it could then be attacked via the UPC in the central division (actions in respect of validity can only be brought before the Central Division by virtue of Article 33(4) of the UPC) but it seems that a separate action is needed with all the associated costs and hassles.
The reverse scenario (unitary and EP(IT) and action brought before unified patent court in respect of the EP(IT) only) also appears to result in the same outcome.
However, if the patent owner doesn’t select a unitary patent in (1) above but instead validates in a number of EP countries only then it would seem that, by virtue of Article 34 of the UPC agreement, all the EP(national) patents that fall within the scope of the unified patent court will be revoked, including the Italian one.
Is this another quirk of the system? Or is there a way that the unified patent court can deal with both the unitary patent and the EP(IT) in the same action? We’d be interested in hearing your thoughts.
Mark Richardson 10 February 2014