Unitary patent and Unified patent court – Conference Review (Part II)

As noted yesterday,  I attended the 2nd annual conference on the “Unitary patent and Unified patent court” held in Paris on 4 July. The report of the early morning sessions ((1) and (2)) from this conference can be found in yesterday’s post. Today’s post takes in the sessions ((3) and (4)) between the mid-morning break and lunch (Ratification update and a keynote speech from Margot Fröhlinger).

3) UPC Agreement Ratification Process: One Fraught with Risk?

Leading the conference into lunch was a look at the UPC ratification process.

Fabrice Claireau (Head of Legal and International Department INPI) noted that he had been at the recent CJEU hearing in respect of the two Spanish challenges to the unitary patent (UP) system. This hearing took place in front of 15 judges, none of whom asked a single question during the hearing! In Fabrice’s view he thinks the Spanish arguments will be rejected as strong and consistent counter arguments were made by the member states who were present at the hearing. However, even if the CJEU partially attack the current set up he believes that the UP system will “find a way”.

Dr Mihály Ficsor (VP for Legal affairs, IP Office Hungary) noted that Hungary has performed a financial assessment (with PwC) of the UP system. A consultation is to be launched soon in Hungary but it sounded like ratification there will only follow once there is more clarity on the renewal and court fees. Mihály noted that the arguments against ratification are that it will open up a flood of patents, that it might still be possible to benefit from the system without taking part and that there are concerns over machine translations. However, Mihály also noted that there is a political will in Hungary to join the system (they are hosting the training centre after all!). Any delays in ratification are only representative of the missing fee data and other “technical” issues.

Mihály did question whether the renewal fee calculations would need to be redone every time a new member state completed ratification [this assumes the system starts with less than the maximum countries taking part] and speculated that the UK or Germany might deliberately delay either ratification or deposition to allow a more synchronized process.

Svetlana Kopecká (Director of International Department IP Office in Czech Republic) noted that the ratification procedures across Europe are not harmonized. In the Czech Republic a vote in both chambers of parliament will be needed to ratify and additionally an economic impact analysis will be required as part of their ratification process. This study will only be commissioned after the court/renewal figures are known.

Again, it was noted that there is a political will (in the Czech Republic) to take part in the UP system but ratification will be delayed due to these “technical issues” again.

Alexander Ramsay (Vice Chairman, Preparatory Committee) took part in this discussion as well and highlighted a potential difficulty at the point that the unified patent court agreement (UPCA) comes into force. According to the UPCA, when this happens then the unified patent court will come fully into force as well. This could cause a bit of a logistical headache. For example, do you try and implement everything overnight or do you try and get things in place before the UPCA comes into force?

However, Alexander suggested that the Preparatory Committee might be looking to Article 25 of the Vienna Convention (Law of Treaties) to try and find some way that would allow provisional application of the UPCA before the UPC actually starts. This could buy 3-6 months breathing space to allow the systems to bed in before the doors open.

During the Q&A session I asked a not particularly serious question: “What happens if the UK leaves the EU?” The not-so-serious answer was that things would probably then go more quickly! Alexander Ramsay also noted that the Preparatory Committee are dealing with enough real problems without looking for potential problems as well!

The issue of national prior rights having an impact upon unitary patents was raised and Margot Fröhlinger (EPO) indicated that the EPO is going to begin searching of national prior rights.

4) Keynote address: The state of implementation of the Unitary Patent & the Unified Patent Court

Margot Fröhlinger (Principal Director of Patent Law and Multilateral Affairs at the EPO) then gave the keynote address before lunch and gave a typically robust assessment of the unitary patent project. The Deloitte report from Poland was given fairly short treatment (in my view) and Margot indicated that if there are concerns over losing the opt out period after 14 years (the initial period of 7 years can be extended to 14 years) then the period could be extended further by using the revision clause within the UPC. However, in her view this will not happen.

The recent A&O report, that suggested that many firms support the UP system, was mentioned again (see Part I for an earlier reference) but there was no acknowledgement once gain that this report related to medium/large entities.

The keynote speech then moved onto the issues of bifurcation and injunctions. On the injunction issue Margot suggested that there will be no automatic injunctions and the bifurcation worries are regarded as a lot of hype that won’t be a problem in reality. So that’s told us then….

Ms Fröhlinger concluded her speech by saying that the Rules of Procedure are not yet perfect but that the UP process has been a fantastic project.

We will post the review of the afternoon session of the Unitary patent and Unified patent court conference later in the week.

Mark Richardson 9 July 2014