Unified Patent Court Agreement moves ahead as German Federal Constitutional Court rejects challenges

This ratification Bill was adopted by the German Parliament on 18 December 2020. In the order published on 9 July 2021, the FCC rejected those two applications and stated that the constitutional complaints lodged in the principal proceedings are inadmissible as the complainants failed to sufficiently assert and substantiate a possible violation of their fundamental rights.

 

Olaf Ungerer, Partner and European Patent Attorney in Munich outlines the key implications.

 

Next steps

 

The way is now clear for the deposit of the Ratification Bill in Germany. In addition, for the project to move into its final phase, a further two signatory states must agree to be bound by the Protocol on Provisional Application. In the meantime, the work of the Preparatory Committee and its interim team continues. A timeline and a more detailed plan for the start and execution of the Provisional Application Period will be published in due course on the website of the UPC.

 

In December 2012 the Council of the European Union and the European Parliament agreed on two regulations laying the foundation for unitary patent protection in the EU. Shortly afterwards, in February 2013, 25 EU Member States signed the Agreement on a Unified Patent Court (UPC). Currently Spain, Italy and Croatia are not participating in the Unitary Patent Protection (UPP). They might of course join. Poland is participating in the UPP but has still not signed the UPC Agreement. This committed the Contracting Member States to establish a Court common to them with exclusive jurisdiction for future European patents with unitary effect (Unitary Patent Protection) as well as for European patents validated in one or several of the contracting states – ‘classical’ European patents.

 

Three options for patent holders in the EU

 

The aim of the reform is to offer business an alternative by simplifying the existing system to support a cost-effective route to patent protection and dispute settlement.

 

It will still be possible to use the national route for those preferring to seek protection in individual EU Member States and to validate a European patent in one or several Member States.

 

It will also be possible to combine the new system with the old one and have a European Patent with unitary effect and in addition validate the patent as a classical European Patent in other EPC Contracting States. Consequently, there will be three routes to patent protection in Europe in the future.

 

Unitary Patent Protection (UPP)

 

The UPP will make it possible to get unitary effect for a European patent in 25 EU Member States with one request. In the pre-grant phase, the UPP builds on the European Patent Convention (EPC). This means that nothing changes in the pre-grant phase. The applicant applies for a European patent at the European Patent Office (EPO); the EPO handles the application in accordance with the EPC; and, if all relevant criteria are met, eventually grants a European patent.

 

The proprietor of a European patent will, after grant, have the opportunity to file a request for unitary effect. If the formal requirements are met the European patent shall then benefit from unitary effect – uniform protection and equal effect – in all the participating Member States. Consequently, by the means of one single request, the proprietor of a European patent will be able to get patent protection in 25 Member States of the European Union.

 

This should be compared with the “classical” European patent, where the patent holder needs to validate the patent in each Member State where protection is required. Different validation requirements apply in the Member States. In several Member States the patent holder must file a translation of the European patent into the official language of the state where protection is requested, pay a publication fee to the national patent office and within prescribed periods of time comply with various formal requirements relating, in particular, to the number of copies to be filed and the use of specific forms. Once the patent is validated the patent holder must pay renewal fees in every Member State where the patent is valid.

 

The UPP and the UPC add other options to the patent system in Europe, and they do not replace the already existing ones. The new patent package will consequently provide users with new choices. A choice between a classical European patent and UPP will need to be made taking into consideration the preferences of the individual patent holder on the different relevant aspects.

 

Key considerations

• Costs - the costs for a classical European patent (costs for validation and the cost of renewal fees in each Member State where protection is required, including related transactional costs) will need to be compared with the costs for UPP (no validation costs except the cost for one translation during the transitional period, a single renewal fee).
• Geography - it will be for the patent holder to consider if there is a need for broad geographical coverage or if protection in a few Member States is enough. Consideration should be made as to whether there is a need for protection at the external borders of the EU against imports from third countries via the EU customs regulation. It is difficult to prevent the further distribution of a certain product once it has entered the Single Market.
• Jurisdiction - the patent holder needs to consider if the patent should be subject to the exclusive jurisdiction of the UPC or if it is better to use national courts with a more limited geographical jurisdiction. The exclusive jurisdiction is mandatory for UPP and initially optional for the classical European Patent (transitional period of seven years and opt-out for patent holder). National patents will remain in the jurisdiction of national courts.

 

Unified Patent Court (UPC) and dispute resolution

 

The UPC Agreement aims to establish a unified patent jurisdiction covering all the contracting Member States that have ratified the Agreement. The UPC will be a court common to the contracting Member States and thus be part of their judicial system. Accession to the UPC Agreement is open to any Member State of the European Union but is not open to states outside of the European Union. At the moment, all European Union Member States except Spain, Poland and Croatia have signed the Agreement.

 

The UPC will, as a general rule, have exclusive competence in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications.

 

The UPC’s rulings will have effect in the territory of those Contracting Member States having ratified the UPC Agreement. The UPC will not have any competence regarding national patents or supplementary protection certificates granted for a national patent.

 

The UPC will also have exclusive competence in respect of actions concerning decisions of the European Patent Office in carrying out the tasks of administering the UPP set out in the UPP regulations.

 

How we can help

 

For more information on patent protection across Europe, please contact our expert attorneys on 020 7831 7929 or email webenquiry@pagewhite.com.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in July 2021.