The Unitary Patent and the Unified Patent Court - May Update

Catherine M. Jewell & Sarah-Jane Poingdestre | May 2016

The long-awaited Unitary Patent system, i.e. the European Patent with Unitary Effect (EPUE or “Unitary Patent”) and the associated Unified Patent Court (UPC) are scheduled to enter into force from early 2017, with a “sunrise period” expected to bring certain provisions into force towards the end of 2016.  For an overview of the new system, please see our introductory article here.

As more pieces of the legislative jigsaw fall into place, a number of uncertainties still remain at both a practical level and a political level.  So what is the current status and what key issues are yet to be resolved?

The Unitary Patent

  • The Rules relating to Unitary Patent Protection were finally approved by the EPO Select Committee in December 2015.  The rules are available here
  • Renewal fees: Unitary Patents will be renewed centrally through the EPO.  Renewal fees will be based on the cost of renewals in the four most frequently validated EP states (‘true top four’), namely The UK, Germany, France and the Netherlands (see Rules Relating to Fees).  The Select Committee has also adopted the distribution key, i.e. the apportionment of the 50% share of the Unitary Patent renewal fees amongst the participating EU Member States (the EPO retaining the other 50%). 
  • Language Regime: As regards the translation arrangements for the unitary patent, it has been decided to adopt the EPO’s tried and tested system based on three official languages, namely English, German or French.  During a transitional period of a maximum of 12 years, a Unitary Patent granted in English will require translation into one other language of an EU member state.  A Unitary Patent granted in French or German will require translation into English. The transitional period will start when the Agreement comes into force and there will be no translation requirements after expiry of this period. 
  • Supplementary Protection Certificates (SPCs): Neither the EU regulations for the Unitary Patent or the UPC Agreement provide for a Unitary SPC. The European Commission is considering how to create a Unitary SPC and has announced that it will address "uncertainties over how the Unitary Patent will work together with national patents and national supplementary protection certificates (SPC)".  Watch this space for updates.

The Unified Patent Court (UPC)

  • The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will be composed of a central division (with sections in Paris, London and Munich) and by several local and regional divisions in the Contracting Member States to the Agreement.  The Court of Appeal will be located in Luxembourg.  The Nordic-Baltic regional division will be based in Stockholm.
  • In October 2015, the Preparatory Committee for the Agreement on a Unified Patent Court (UPCA) unanimously adopted the final version of the Rules of Procedure in the form of the 18th draft edition.  Further changes will need to be made to these now that the provisions relating to Court fees and recoverable costs have been finalised.
  • The Protocol to the UPC Agreement on Provisional Application was also adopted last October.  This will allow certain parts of the UPC Agreement to be applied before the Agreement in its entirety comes into force. In particular, holders of classical European patents will be able to register opt-outs during a “sunrise period” which will be in operation in 2016.
  • In February, the Preparatory Committee agreed the Rules on Court Fees and Recoverable Costs.  Although the Rules will be subject to legal scrubbing, the fees have been published alongside an Explanatory Note.
  • The UPC judicial recruitment package was agreed during the most recent UPC Preparatory Committee meeting held in Luxembourg.  Advertisements for the UPC’s judicial posts are due to be published in May with the recruitment process beginning soon after.
  • In February, the UPC Preparatory Committee published a draft of the 2016-02-16 UPC Mediation Rules.  These are the rules of mediation of the Patent Mediation and Arbitration Centre, which will provide facilities and support for the settlement of disputes relating to Unitary Patents and classical European Patents for which the Unified Patent Court is exclusively competent.   These rules will be subject to “legal scrubbing” and possible further work to align them with other rules, but no additional details are available at this stage.
  • The draft Code of Conduct for Practitioners, which has been developed by EPLAW, EPLIT and the epi, is scheduled to be agreed at the next Preparatory Committee meeting at the end of May 2016.  The draft Code of Conduct is not yet publicly available.
  • The signing ceremony for the Protocol on Privileges and Immunities is scheduled for the end of June 2016.  This could be an important milestone in terms of the ratification of many Contracting Member States.
  • The beta test site for the UPC Case Management System and eFiling system is available for user testing here. The continued development of the UPC’s IT system will be carried out by the CTIE (Centre des Technologies de l'Information de l'Etat) in Luxembourg, where the Court’s Registry will be located.  

Ratification

To date, nine Member States have ratified the UPC Agreement.  For the agreement to come into effect, 13 Member States must ratify, including France (which has ratified already), Germany and the UK.

The German Government has published the first draft of their UPC legislation, and it is anticipated that final draft bills will be introduced into the German Parliament before summer 2016. 

The UK legislation to introduce the UPC system has now been finalised and the Statutory Instrument amending the UK Patents Act 1977 has been made.  The legislation will come into force if and when the UPC Agreement takes effect.  UK ratification is unlikely to happen before the national referendum on EU membership on 23 June 2016.

In the meantime, watch this space for further articles and updates on the Unitary Patent and UPC…