This is another belated IPcopy report of a recent CIPA UPC seminar. This webinar looked at the issue of Infringement and Validity Opinions in the European patent landscape when (if?) the unitary patent scheme comes into effect.
Currently of course providing a pan European I&V opinion means that a bundle of EP patents need to be considered and requires the assessment of different infringement and validity laws in different countries. The seminar, run by Leythem Wall of Finnegan, asked whether UK EPAs* will be able to provide a pan European infringement and validity opinion once the Unified Patent Court opens its doors.
Unified Patent Court Agreement
Taking a look at Article 32 of the UPC Agreement shows what the new court will have “exclusive” competence for – infringements (of patents and SPCs), declarations of non-infringement, provisional measures and injunctions, revocation actions, counter-claims for revocation, actions for damages, prior use issues. National courts remain competent for actions that don’t fall within the exclusive competence of the UPC.
Within a transitional period of 7 or 14 years however, according to Article 83(1) UPC Agreement, actions relating to classical European patents (i.e. not unitary patents) may still be brought before national courts. Additionally, according to Article 83(3) UPC Agreement, it will be possible to opt classical European patents out of the exclusive competence of the UPC. Opt-outs can also be withdrawn according to Article 83(4) UPCA.
The ability to opt a European patent out of and then back into the competence of the UPC has a consequence for I&V opinion work as national law and/or the UPC Agreement law may apply in different circumstances. Additionally there may be a flip-flop effect between the relevant law as a patent is moved from its default position (within the competence of the UPC) to an opted-out status and then potentially back into the competence of the UPC.
Within the UPC Agreement, EU law is given primacy (Art 20) and decisions of the CJEU are binding on the UPC (Art 21). [“Red line?….What red line?”]
Under Art 24 UPCA a number of sources of law are listed, namely Union law including the two unitary patent regulations (1257/2012 and 1260/2012), the UPCA itself, the EPC, other international agreements between the contracting states of the UPC and national law. It was noted that the ordering of these sources of law may represent the priority of law that the UPC may base its decisions upon.
Direct infringement is covered in Art 25 UPCA and indirect infringement in Art 26 UPCA of classical European patents and unitary patents. The phrase “within the territory of the Contracting Member States” in the context of offering an essential element of a process was highlighted and a question was asked if it matters, for the purposes of determining infringement, if different steps of a process are carried out in different member states (e.g. in France and Germany)? Is this issue different for classical European patents and unitary patents?
Exceptions to infringement are located at Art 27 UPCA and the presence of two additional exceptions compared to UK law, namely Art 27(c) (use of biological materials) and Art 27(k) (computers – decompilation and interoperability), was noted.
Art 28 of UPCA relates to prior use and Art 29 UPCA covers Exhaustion of rights (exhaustion relates to the EU so the exhaustion requirement will be met even if product is placed on the marked in a non UPC EU member state e.g. Spain).
Infringement & Regulation (EU) No 1257/2012
Regulation 1257/2012 notes that it constitutes a special agreement within the meaning of Art 142 EPC.
Article 5 of the Regulation potentially throws up a conflict when trying to determine how to assess infringement of a unitary patent.
Art 5(3) notes that the protections provided by the unitary patent shall be those defined by the law applied to EP patents with unitary effect in the participating member state whose national law is applicable according to Article 7 of the Regulation. Art 7 in turn states that the unitary patent is to be treated as a national patent of the participating member state in which the applicant was resident or had a place of business as of the date of filing of the European patent application**. For joint applicants the assessment of national law applies to the first mentioned applicant unless they don’t have a place of residence/business in the participating member states in which case the assessment moves on to the next applicant. Where the applicant(s) do not satisfy the residency or place of business conditions then the relevant national law defaults to German law.
So the Regulation, which is a source of law on which the UPC can base its opinions, states that national law shall be selected depending on the date of filing of an application whereas the UPCA details rights as well. Is there a conflict here? Which law should be chosen when formulating an I&V opinion?
The unitary patent regulation 1257/2012 does not contain any directions on determining validity of a unitary patent.
So returning to Art 24 UPCA, the Agreement notes that the EPC is a source of law upon which the UPC can base its decisions. Additionally according to Art 65 UPCA the Court may revoke a patent only on the grounds referred to in Art 138(1) EPC [namely exclusions, novelty, inventive step, industrial application, entitlement, added matter, sufficiency] and 139(2) EPC [national prior rights].
It is therefore noted the grounds of revocation in front of the UPC are broader than grounds of opposition at the EPO since UPC revocation additionally includes entitlement and prior rights grounds.
Leythem noted therefore that that a unitary patent may be impacted by a national prior right but also that classical European patents may be impacted by national prior rights in other states. Can a national prior right in a different member state revoke the bundle of EP patents in the ratified UPC member states?
For unitary patent infringement there may be difficulties working out the place of residence/business of the patent owner and consequently therefore which national law applies. Additionally, there may be questions whether the infringement provisions of national law are usurped by the terms of the UPCA.
There may therefore be multiple different types of law to consider when preparing an infringement and validity opinion for the UPC jurisdiction, namely:
- Unitary patents – infringement determined by national law or UPCA?
- Non-opted out EP patents – infringement determined by UPCA
- Unitary patents and non-opted out EP patents – validity determined by EPC
- Transitional period – national law will apply to opted out EP patents
- Non-UPC states – national law will apply
When looking to provide an opinion on a European patent application then the person providing the opinion will additionally have to take into consideration the possibilities that (i) the patent is granted as a bundle of EP patents which are opted out; (ii) the patent is granted as a bundle of EP patents which are not opted out; (iii) the patent is granted, opted out and then opted back in; (iv) the patent is granted as a unitary patent.
Mark Richardson 24 August 2017
*Grandfathering provisions should mean that the majority of the UK patent profession should be able to become UPC Representatives
** It is noted that the EP Patents Register should be updated with this information in due course