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Home , Unitary patent

Introduction

The call from industry for a harmonised European patent system, consisting of an EU-wide patent title and a unified court system, is something most pat- ent practitioners in Europe (irrespective of their period of service) have been hearing for a very long time. This is no surprise when one considers that ever since the Treaty of Rome establishing the European Economic Community was signed in 1957 and entered into force on 1 January 1958, there have been numerous attempts and propositions to create a unified European patent system. But in 2012, finally, 25 EU Member States – and do not take part for language reasons – agreed to get started with a unified patent system on their territories. Two European Regulations of 17 December 2012 created the European patent with unitary effect (the “unitary patent”). One Regulation concerns the unitary patent itself, while the second Regulation relates to the translation regime of the unitary patent. Since the 1970s, a European application procedure for patents exists, covering 38 European countries resulting in the so-called “European patent”. The (the “EPO”), with its headquarters in , examines European applications and decides whether or not to grant a patent. However, the disadvantage of the classic European patent is that, after ap- proval, the patent proprietor only obtains a bundle of national patents. To have effect in some or all of the 38 participating European countries, the patent proprietor has to “validate” the European patent in the different countries. This means that the patent proprietor needs to pay the renewal fees of the countries where patent protection is wanted and, if required, translate the pat- ent into the official language(s) of the countries concerned. Therefore, obtain- ing patent protection for an invention in a great number of European countries (e.g. all EU countries) is very costly. A European patent is twelve times more expensive than a US patent. The new unitary patent intends to get rid of the disadvantages of the classic European patent. As soon as the two European Regulations regarding unitary patent protection come into operation, a unitary patent proprietor shall only have to pay one renewal fee and translate the text of the patent into at

1 Introduction most one additional language (other than the language of the EPO procedure), for its invention to be protected in 25 EU Member States. Another disadvantage of the current system is the parallel litigation. To- day, after the opposition proceedings before the EPO, it is not possible for an alleged infringer to invalidate with a single court decision a European patent in all Member States where the patent is valid. On the other hand, the current system can cause conflicting decisions on the validity and/or infringement of a patent. Parallel litigation is again very costly and certainly not effective. The 25 EU Member States wanted a complete reform of the current patent system and therefore choose to deal with these disadvantages. On 19 February 2013, the 25 EU Member States that are participating in the unitary patent system shall have the opportunity to sign a treaty (“Agreement”) to establish a . The Unified Patent Court installs a patent jurisdic- tion with effect in all Participating Member States. This will, amongst other things, enable a unitary patent proprietor to obtain a cease-and-desist order or a preliminary injunction effective in all Participating Member States. It will also enable a defendant to obtain revocation of a unitary patent with effect in the Participating Member States. In this publication we shall describe into detail all the new provisions of the two Regulations regarding the unitary patent and the Agreement on a Unified Patent Court. Since both the Regulations and the Agreement are not yet in operation, it is not our intention to take up any positive or negative position regarding the new system but rather provide interested parties with an introduction to the new patent and litigation system. In the first place the interested parties are patent practitioners (patent attorneys, IP lawyers, researchers, judges, members of the national patent of- fices and the EPO, etc.). But this book is equally intended to be read and used by entrepreneurs, tech transfer officers, engineers, company lawyers, public servants and all other persons interested in the new system. At the same time, this publication can be a working tool for the EPO, the Participating Member States and the Unified Patent Court to set up the new system in the best pos- sible conditions. The book consists of two parts. The first part gives an overview in plain text of all rules regarding the unitary patent and the Unified Patent Court. First, the reader is informed on how to obtain a unitary patent, the (transla- tion) requirements for a unitary patent and all the consequences of the unitary patent title. Then, the reader can get acquainted with the organisation and functioning of the future Unified Patent Court. We shall discuss the different divisions of the Court, the judges and panels deciding the cases, the compe- tence and powers of the Court, the language regime, etc. The second part of the book deals with the draft Rules of Procedure of the Unified Patent Court.

2 Introduction

The subsequent stages of the proceedings are represented in flowcharts and, where necessary, further explained in plain text. Finally, the language issues of the proceedings are analysed in detail. Compared to the Regulations and the Agreement, the Rules of Procedure are not yet final since they have to be adopted by the (Administrative Committee of the) Court itself. The authors hope that the second part of this book can be used by all different stakeholders as a working tool during the process of finalising the Rules of Procedure. The manuscript of this book was submitted for publication on 31 Decem- ber 2012. The study of the unitary patent provisions is based on the Regula- tions Nos. 1257/2012 and 1260/2012, as approved by the and the on 17 December 2012. However, for the Unified Patent Court, the text of this book is based on the version of the Agreement on a Unified Patent Court submitted to the delegations of the Participating Member States for final linguistic remarks on 17 December 2012. Therefore, it is possible that this book does not include minor linguistic changes which have been included in the signed version of the Agreement. The version of the draft Rules of Procedure which has been used for the second part of this book, is the fourteenth draft, dated 31 January 2013. The fourteenth draft was intended for public consultation.

3 About the Authors

Pieter Callens (1980) is an attorney-at-law specialising in law (with a special focus on patent law) at the Belgian law firm Eubelius. He has developed extensive expertise in different matters of intellectual property law and unfair competition. He obtained a Master in Law at the Catholic Uni- versity of Louvain () and a Master in Economic Law at the Université Libre de Bruxelles (Belgium). During his law education, Pieter studied US patent law as an exchange student at Duke University (North Carolina, USA). In his previous professional life, Pieter was advisor to the Belgian Minister of Economy with respect to intellectual property matters. Pieter advised the Bel- gian Presidency of the in 2010 when the European Council reached a political compromise on the language regime of the unitary patent. Pieter is a member of AIPPI and the Advisory Board for Intellectual Property to the Federal Belgian Ministry of Economy. He has written several publications on Belgian intellectual property law.

Sam Granata (1970) is a Judge at the Commercial Court of Antwerp (Bel- gium), external member of the Enlarged Board of Appeal of the EPO and member of the Advisory Board for Intellectual Property Rights to the Federal Belgian Ministry of Economy. Throughout his academic and professional career, Sam has proven to have a strong interest in patent law. He obtained a Master in Law at the Catholic University of Louvain (Louvain, Belgium), a Master in Intellectual Property Law at Franklin Pierce Law Center (now University of New Hampshire, New Hampshire, US) and a Master of Arts in Interactive Multimedia at the University of London (London, UK). In his previous professional life, Sam was a research fellow at the Center for Intellectual Property of the Catholic University of Louvain (Louvain, Belgium) and has worked as an attorney-at-law specialising in intellectual property law and mediator in Brussels and Antwerp (Belgium). He is a frequent speaker at IP related events.

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