DOCSLIB.ORG

The Unified Patent Court: Post Brexit

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
The Unified Patent Court: Post Brexit The Unified Patent Court: Post Brexit 2016 NAPABA Convention San Diego, CA ‒ November 4, 2016 Regina Sam Penti Ropes & Gray Boston, London [email protected] 1 The UPC: Post Brexit . The Unified Patent Court . The UPC: Post-Brexit 2 The Unified Patent Court Difference Current System Validate Enforce Outcome Country A Court A Outcome A Country B Court B Outcome B Country C Court C Outcome C Country D Court D Outcome D Unified System Validate Enforce Outcome EU Unitary Unitary Single Patent Patent Court Outcome 3 Patents Needed Today for World Markets Countries by share of world GDP (World Bank 2013) US patent Rest of world (125 countries) Patents in 28 EU states Chinese patent 4 Patents Needed with UPC U.S. Patent Rest of world (125 countries) 1 EU Patent* 1 Chinese Patent *Except Poland 5 The Patent with Unitary Effect . One patent, litigated before one tribunal, rendering one judgment . The judgment will have force across the European Union – a body with a $17 Trillion market by GDP and 500 million citizens 6 This Will Probably Adjust Your Filing Strategy . Easier overall global coverage 3 patents 55% of world 2 patents 40% market of world market . Common market patent challenges the value of other patents: . Japan, Korea, Australia, Canada, Brazil, etc. 7 A Tectonic and Intentional Shift . An intentional change to European patent litigation . A globally competitive use of the common market . Benefits EU companies, and . Takes market share from U.S. courts . Exclusive jurisdiction over all EPO patents . EPO patents retroactively under UPC unless affirmatively opted out Primary Outcome: Injunctions across the EU 8 Process to Obtain a Patent with Unitary Effect Current System EP Patent . Bundle of rights that must be: . Validated PCT . Translated Application . Enforced on country-by-country basis EP Patent New Unitary Effect . EU Unitary Patent System . Single EPO validation . Limited translations . EU wide enforcement (Poland is out) 9 Compared to the U.S. system • Almost always a jury • Non-technical judge • Expert driven • Little ability to get an injunction • Damages based on smallest infringing unit U.S. Federal • As likely to lose on appeal as to win Court System • Very high standard of obviousness and patentable matter • Very hard to enforce against joint infringers • Extensive discovery • Millions of dollars to reach verdict • Moving to loser pays • No jury • Specialty patent judges, technical judges available • Some expert testimony • Injunctions likely upon a credible showing of infringement Unified Patent • Unknown laws on establishing infringement • Unknown rate of overturn at second instance Court • Much less Expensive than U.S. • But front-end loaded (official fees can be $200k, and full case needs to be presented at the outset) • Loser pays 10 The Challenges for U.S. Companies The UPC rules level the field between large and small . US companies are often the larger company in European disputes . Large companies may not benefit as much from strong patent rights . Patents often viewed as a stumbling block to their marketing efforts The UPC favors . Applicants who follow European Patent laws and rules . Minimal discovery always favors the plaintiff suing in their local market . Case must be prepared upfront . No one cares about your skill in front of a jury 11 Operational Challenges Facing US IP Counsel • Existing U.S. patent staff lack skill set to • Draft applications meeting U.S. and UPC standards Lack of trained • Do FTO analysis and due diligence in Europe • Assess opposition/litigation risk/outcome staff • European Patent Attorney ranks are not large (Especially true for English speaking hires) • No regular training programs in the US • A lot of misinformation lingers Lack of good • Very few channels of information for US attorneys information • Junior attorneys guessing their way through 12 UPC Revocation Proceedings Will Resemble EPO Oppositions/Appeals and PTAB Trials Complex and dynamic . Combative interrogation of the patent specification . Amendments 3-Judge panels selected from central pool . Technical Judges asking technical questions . Extensive discretion – e.g., bifurcation; discovery; interim measures . Appeals to Luxembourg will set precedent Principally written arguments . Concise one-day oral hearing . Limited discovery (e.g., Seize, discretionary) . Case must be ready upfront 13 But this is New for All Practitioners Different from German litigation . UPC tribunal handles all validity and infringement . Language of the claims will principally be English . Extensive discretion of the UPC . Some discovery and use of experts Different from UK litigation . UPC has 3/4-Judge panels - Not a single Judge . Technical Judges making technical assessments . Reduced importance of experts and precedent – no cross-examinations of experts Not EPO opposition . Some discovery (e.g., Seize) and handling of evidence . Issues of infringement and damages . Unlikely to see UPC use PSA 14 Practical Impact on Global Patent Strategy Increased Relevance of EP Increased Scrutiny of EP Portfolios Portfolios . They protect the EU common market . Increases value of strong EP patents . Higher portion of company budget . Weak EP patents more vulnerable . Possibly more anti-trust scrutiny . Opt-out decision will be important . License agreements – e.g., prosecution and potentially complex and enforcement rights . Oppositions will remain available at . Acquisitions may increase low cost Greater need to coordinate global litigations . UPC lower cost, faster litigation . More EU litigations likely, more will interrelate with U.S. Potentially the best venue for patent owners 15 Impact (cont.) FTO risk assessments and transaction diligence . Diligence of EP portfolio complex - portfolio must be right at the outset . Small entity EU portfolios likely to be more important . Infringement risks . More detailed assessment will be needed in many industries, more important in Europe for product launch and investments 16 Retroactivity and “opt-out” UPC is retroactive for all pending and granted EP patents . Judgment enforceable in all MS where EP rights are validated RETROACTIVE IN UNLESS OPT-OUT “opt-out” is done on a Can opt back in during the 7 Year transition period patent-by-patent basis 7-year period . Committee may extend . By affirmative filing with . But not if your opted out transition time the EPO patent reverts patent is challenged in a to national court national court jurisdiction 17 During Transitional Period: National Courts Still Available (Brussels regulation) . If you don’t opt out, you can enforce EP patents in the UPC and national courts . Enforcement options . UPC for COA #1/Party #1 . National court for COA#2/Party #1 or #2 18 Opt-out Strategies Strategies: may vary by Concerns expressed by Key consideration for non- industry sector opponents pharma/biotech: costs . Pharma/Biotech . Risk of “key” patents . Caterpillar strategy . Tech/Med Tech invalidated/unenforceable . EPO adopted the true top . NPEs across Europe 4 – effectively same as . Fear of entrusting valuable costs for UK, DE, FR and assets to untried system NL . Risk having “rules of engagement’ set by other industries . By affirmative filing with the EPO patent reverts to national court jurisdiction 19 The UPC: Post Brexit . The Unified Patent Court . The UPC: Post-Brexit 20 Brexit--June 23, 2016 On June 23, 2016, the United Kingdom European Union membership referendum resulted in an overall vote for the UK to leave the European Union. • When will UK leave the UPC? • How will UK leave the UPC? • What will change for the UPC? “When”: The Timeline . The Court of Justice of the European Union has in effect decided that only EU member states can be a member of the UPC. Jun 23, 2018 May, 2017 Two years after Brexit UPC Start Date Oct 2016 Next Preparatory committee meeting of the UPC. Aug 2, 2016 UK IPO Publishes Guide. Despite the “Brexit” vote to Jun 30, 2016 leave, the UK will still Preparatory committee remain in the EU for at meeting of the UPC. least two years after notice Jun 23, 2016 of intention to leave is Brexit. given Jun Jul Aug Sep Oct … Jan Feb Mar Apr May Jun 2016 2018 “How”: Negotiations? Ratification? . Other states cannot proceed without UK - Under the present UPC Agreement, UK is one of three countries that must ratify the Agreement to enable it to come into effect. The anticipated UPC start date of May 2017 may likely be postponed, depending on the progress of UK ratification of the UPC Agreement by the end of 2016. “What”: Future of UPC . Scenario 1: UK ratifies the UPC Agreement to let UPC start – politically unlikely - UPC Agreement includes a provision accepting the primacy of EU law - after Brexit and under current domestic political climate, UK has no motivation to ratify such provision. “What”: Future of UPC . Scenario 2: Amend the UPC agreement so that UPC can proceed without UK’s ratification— political issues, tedious process - Too much amendments: first to remove the need for the UK to ratify, and second to re-distribute the UK's part of the central division - A new agreement between members is needed to validate the revised agreement so as not to breach UK’s rights, likely causing further delay to the UPC start date - A new system without UK’s participation is less attractive “What”: Future of UPC . Scenario 3: A modified UPC system that UK can participate in the long term – appealing but difficult - The arrangement need to be both politically acceptable to the UK (and other UPC states) and legally acceptable to the CJEU which has already held that only EU members can join UPC - Starting the modified UPC without CJEU approval as a second opinion could be risky for the furture - A period of negotiations can be foreseen and most likely the issue will be referred back to CJEU, which will incur further delay. “What”: Future of UPC . Scenario 4: negotiating with UK to “partially” ratify in the short term to allow the UPC to start as planned– the most popular - all parties can negotiate on what is politically and legally possible - the future of the UPC and unitary patent project is still very much in the balance Implication to Patent Practitioners .
Load more

Recommended publications
  • The Unitary Patent and the Unified Patent Court
    The Unitary Patent and the Unified Patent Court Dr. Leonard Werner-Jones Background The Past: • No centralization at all • Prosecution country-by-country • Litigation country-by-country National National Patents actions 2 The Unitary Patent and the Unified Patent Court Background The Present (since the 1970’s): • Partial centralization • Prosecution centralized at the EPO • Litigation country-by-country in national courts European National Patent actions 3 The Unitary Patent and the Unified Patent Court Background The Future: • Complete centralization • Prosecution at the EPO • Litigation at the UPC EP-UEs Centralised action 4 The Unitary Patent and the Unified Patent Court Filing and Prosecution Filing and prosecution • No change • The EPO will still be responsible for search, examination and grant of patents • All key aspects of EPO practice remain unchanged • The fun and games start at grant… 5 The Unitary Patent and the Unified Patent Court EPO Grant – Decision Time When an EP is granted, applicant will have choice: 1) Validate to get an EP patent with unitary effect (EP-UE / UP (Unitary Patent)) 2) Validate the patent country-by-country as we do now (Classic EP) • Decision has to be made within 1 month of grant by the EPO 6 The Unitary Patent and the Unified Patent Court Territorial Scope Country EPC UP UPC Ratification Country EPC UP UPC Ratification † † AL * Albania • LT Lithuania • • AT Austria • • • 06.08.13 LU Luxembourg • • • 22.05.15 BE Belgium • • • 06.06.14 MK* Macedonia • BG Bulgaria • • • 03.06.16 MT Malta • • • 09.12.14
    [Show full text]
  • Enhanced Cooperation, EMU Reforms and Their Implications for Differentiation in the European Union ­­
    Tomasz Kubin Enhanced Cooperation, EMU Reforms and Their Implications for Differentiation in the European Union ­­ Tomasz Kubin Faculty of Social Sciences, Institute of Political Sciences and Journalism, University of Silesia in Katowice ul. Bankowa 11, Katowice 40-007, Poland E-mail: [email protected] Abstract: Initially, before the entry into force of the Maastricht Treaty, differences in integration between members of the European Communities (EC; later the European Union) were relatively few and usually temporary in nature. The Schengen Agreement, the Maastricht Treaty and the Treaty of Amsterdam, and the possibility of establishing enhanced cooperation meant that the problem was becoming more and more important in the functioning of the EU—both in theory and in practice. The objective of the paper is to show that for several years, along with the stagnation in the deepening of integration between all the EU Member States, differentiation of integration in the EU is progressing very rapidly. The progressing differentiation in the EU is a consequence of mainly two processes: the development of enhanced cooperation and reforms in the eurozone, which are strengthened by the widening of the EU. The article covers the issue of the categorization of differentiation of European Union integration, which constitutes the theoretical framework for further considerations. Specified processes which contribute to increasing the differentiation of the EU are discussed, showing the development of enhanced cooperation in the EU and presenting the reforms of the eurozone. The article concludes with the identification and the consequences of differentiated integration, both those that have already occurred and those that may occur in the future.
    [Show full text]
  • Ec Budget 2007
    House of Lords London European Union Committee SW1A 0PW www.parliament.uk/hleue The primary purpose of the House of Lords European Union Select Committee is to scrutinise EU law in draft before the Government take a position on it in the EU Council of Ministers. This scrutiny is frequently carried out through correspondence with Ministers. Such correspondence, including Ministerial replies and other materials, is published where appropriate. This edition includes correspondence from 1 June to 30 November 2011. JUSTICE AND INSTITUTIONS (SUB-COMMITTEE E) CONTENTS ANTI-COUNTERFEITING TRADE AGREEMENT BETWEEN THE EUROPEAN UNION AND ITS MEMBER STATES, AUSTRALIA, CANADA, JAPAN, THE REPUBLIC OF KOREA, THE UNITED MEXICAN STATES, THE KINGDOM OF MOROCCO, NEW ZEALAND, THE REPUBLIC OF SINGAPORE, THE SWISS CONFEDERATION AND THE UNITED STATES OF AMERICA (12190/11, 12193/11) ................................................................................................................................................. 3 APPLICATION OF THE EU CHARTER OF FUNDAMENTAL RIGHTS (8453/11) ................................... 4 ARTICLE 10(4) OF THE PROTOCOL ON TRANSITIONAL PROVISIONS - PROTOCOL 36 TO THE TREATY OF LISBON ....................................................................................................................................... 4 BRINGING LEGAL CLARITY TO PROPERTY RIGHTS FOR INTERNATIONAL COUPLES (8253/11, 8160/11, 8163/11, 8145/11) .....................................................................................................................................
    [Show full text]
  • Bibliografia ACKERMANN T. E.O., Editorial Comments: the EU's Accession to ECHR
    Bibliografia ACKERMANN T. e.o., Editorial comments: The EU's Accession to ECHR - a "NO" from ECJ!, Common Market Law Review, 2015, p. 1-15 ADAM S., Le mécanisme préjudiciel, limite fonctionnelle à la compétence externe de l’Union. Note sur l’avis 1/09 de la Cour de justice, in Cahiers de droit européen, 2011, p. 277-303 ADAMSKI D., National power games and structural failures in the European macroeconomic governance, Common Market Law Review, 2012, p. 1319-1364 ADINOLFI A., La tutela giurisdizionale nazionale delle situazioni soggettive individuali conferite dal diritto comunitario, Il Diritto dell'Unione europea, 2001, p. 41-61 ADINOLFI A., L'accertamento in via pregiudiziale della validità degli atti comunitari, Giuffrè, Milano, 1997 AGO R., Le organizzazioni internazionali e le loro funzioni nel campo dell'attività interna degli Stati, in Studi in onore di G. M. Francesco, Milano 1956, p. 1 ss ALBERTI J., New developments in the EU system of judicial protection: the creation of the Unified Patent Court and its future relations with the CJEU, Maastricht Journal of European and Comparative Law, 2017, p. 6-24 ALEMANNO A., GARDE A., The Emergence of an EU Lifestyle Policy: the Case of Alcohol, Tobacco and Unhealthy Diets, Common Market Law Review, 2013, p. 1745–1786 ALEMANNO A., Out of Sight, out of Mind - Towards a New EU Tobacco Products Directive, Columbia Journal of European Law, 2011, p. 197-241 ALFARO C., LORENTI P. , Argentina: The Enforcement Process of the ICSID Awards: Procedural Issues and Domestic Public Policy, Latin American Law and Business Reward, 2005, p.
    [Show full text]
  • Summary of the Report Published Under the Industrial Property Research Promotion Project FY2013 Entrusted by the Japan Patent Office
    9 The Positive Impact of Intellectual Property Harmonization on Diversity of National Regulations of International Private Law(*) Invited Researcher: Petr KOSIK(**) Intellectual property is a legal area, which is regulated by a number international treaties. One of most important international treaties is TRIPS. According to this treaty each member shall award the nationals of other member states treatment which is no less favorable than the treatment offered to its own nationals. Currently, patent infringements with certain international aspects are rapidly increasing. Cases, dubbed “patent wars” are becoming more and more common all around the world. The law governing these disputes is usually either elected by the parties or determined in compliance with the EU Regulations known as Rome I and Rome II. The aim of this research is to compare patent cases with international aspects in Japan, EPO countries and the European Union (with the focus what is possible direct to preparing Unitary Patent Court). The research will focus on the analysis of law enforcement with an international aspect. The choice of law rules which may have an important impact on the result of IP cases with international aspects will be analyzed. Also the most frequently cited Japanese IP cases will be analyzed. One part of the research will focus on the issue of exhaustion of rights with international element in Japan and compare this issue with cases and theory in the European Union. This research should point out that the harmonization of intellectual property law will have a positive impact on the diversity of national private international law regulations to Hague Conference Project for a Global Convention on Jurisdiction, Recognition and Enforcement in Civil and Commercial Matters – An update including specific proposals for new legislation.
    [Show full text]
  • The Unified Patent Court – a New Judicial Body for the Settlemnt of Patent Disputes Within the European Union
    Jelena Ćeranić, PhD, Assistant Professor Faculty of Law of the University of Banja Luka Research fellow at the Institute of Comparative Law in Belgrade Institute of Comparative Law Terazije 41, Belgrade, Serbia [email protected] THE UNIFIED PATENT COURT – A NEW JUDICIAL BODY FOR THE SETTLEMNT OF PATENT DISPUTES WITHIN THE EUROPEAN UNION ABSTRACT The Unified Patent Court is established by the Agreement on Unified Patent Court, signed in February 2013 by twenty five EU Member States. The Agreement will enter into force after the ratification of thirteen Member States, including France, Germany and United Kingdom. The Unified Patent Court is a judicial body for the settlement of disputes relating to the European Patents and European Patents with unitary effect. European patent means a patent granted under the provisions of the European Patent Convention (EPC), which does not benefit from unitary effect by the virtue of Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of the unitary patent protection. European patent with unitary effect means a patent granted under the provisions of the EPC which benefits from unitary effect by the virtue of Regulation (EU) No 1257/2012. Taking into consideration a number of attempts to create a unified patent protection system within the EU, the first part of the article represents an overview to the history of establishment of the unified patent litigation system. The second part analyses legal bases, sources of law and structure of the Unified Patent Court. The special attention is devoted to the relation between the Unified Patent Court and the European Court of Justice.
    [Show full text]
  • The Road Towards a European Unitary Patent
    EUC Working Paper No. 21 Working Paper No. 21, March 2014 Unified European Front: The Road towards a European Unitary Patent Gaurav Jit Singh Faculty of Law, National University of Singapore Photo: BNEGroup.org ABSTRACT For over forty years, European countries have held numerous conferences and signed multiple international agreements aimed at either creating a unitary patent which will be valid in all European countries upon issuance or establishing a specialized European court with jurisdiction over patents. This paper first outlines the need for a unitary patent in the European Union and then chronicles the measures taken to support and milestones toward the creation of a European-wide unitary patent system. The paper then discusses the few problems and pitfalls that have prevented European countries from coming to an agreement on such a patent system. Finally, the paper considers the closely related agreements of ‘Unitary Patent Package’, the challenges facing these agreements and examines if it would finally result in an EU Unitary patent system that benefits one and all. The views expressed in this working paper are those of the author and do not necessarily reflect the views of the European Union or the EU Centre in Singapore. The EU Centre in Singapore is a partnership of 13 EUC Working Paper No. 21 UNIFIED EUROPEAN FRONT: THE ROAD TOWARDS A EUROPEAN UNITARY PATENT GAURAV JIT SINGH1 INTRODUCTION Obtaining, enforcing and maintaining patents in the EU are far from efficient or cost effective. An inventor that seeks patent protection in the European Union (EU) territory now has to either file for a national patent in each one of 28 national patent offices, or file for a European patent, granted by the European Patent Office (EPO), within the framework of the European Patent Convention (EPC)2.
    [Show full text]
  • The Long-Term Budget of the European Union
    2015:1op Same, same but different The Nordic EU members during the crisis THE EU´S POLITICAL AND CONSTITUTIONAL SYSTEM Pernilla Bäckman (ed.) Julie Hassing Nielsen Juha Jokela Jakob Lewander (ed.) Göran von Sydow (ed.) Pernilla Bäckman (ed.), Julie Hassing Nielsen, Juha Jokela, Jakob Lewander (ed.) and Göran von Sydow (ed.) Same, same but different The Nordic EU members during the crisis – SIEPS 2015:1op – SIEPS 2015:1op Same, same but different 1 Occasional Paper No. 1op April 2015 Published by the Swedish Institute for European Policy Studies This publication is available at www.sieps.se The opinions expressed in the publication are those of the authors. Cover design by LuxLucid, Stockholm Typeset and printed in Stockholm by EO Grafiska AB ISSN 1651-8071 ISBN 91-85129-92-5 2 Same, same but different SIEPS 2015:1op Preface The euro crisis has marked change in European political systems and governance. The implications of the financial meltdown for labour markets and for sovereign debts have been immense, and, in turn, they have brought about changes in the EUs infrastructure and have deepened the commitment to European cooperation, such as the fiscal compact, the ESM and the European semester. At the same time, however, the effects of the crisis have been asymmetrically dispersed among - and within - the EU member states, where the ideas, realities and benefits of the EU are receiving new political and electoral focus. In this set of unusual circumstances, the perceptions and conceptualisations of European political cooperation may pass through periods of reaction, and possibly, more long-term changes in the definition of EU membership.
    [Show full text]
  • Unitary Patent and Unified Patent Court: State of Play
    UNITARY PATENT AND UNIFIED PATENT COURT: STATE OF PLAY Stefan Luginbuehl Lawyer, International Legal Affairs, PCT European Patent Office, Munich REGULATIONS ON UNITARY PATENT PROTECTION 20 January 2013: Entry into force of two EU regulations . Regulation (EU) No. 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection . Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements For the 25 participating member states REGULATIONS ON UNITARY PATENT PROTECTION . Italy joined the enhanced co-operation scheme 2 October 2015. Regulations (EU) No. 1257/2012 and (EU) No. 1260/2012 are now in force for 26 of the 28 EU member states (exceptions: Croatia and Spain). They apply from the date of the entry into force of the Agreement on a Unified Patent Court (UPC Agreement). AGREEMENT ON A UNIFIED PATENT COURT (UPC AGREEMENT) . The UPC Agreement was signed on 19 February 2013 by 25 of the 28 EU member states (exceptions: Croatia, Poland and Spain). Austria 7 August 2013 . It will enter into force after the deposit France 14 March 2014 of the 13th instrument of ratification or Sweden 5 June 2014 accession (including France, Germany and the UK). Belgium 6 June 2014 Denmark 20 June 2014 . So far, nine states have deposited their Malta 9 December 2014 instruments of ratification. Luxembourg 22 May 2015 Portugal 28 August 2015 . Several states have indicated their intention to ratify in the next few months.
    [Show full text]
  • UPC Agreement
    AGREEMENT ON A UNIFIED PATENT COURT UPC/en 1 UPC/en 2 THE CONTRACTING MEMBER STATES, CONSIDERING that cooperation amongst the Member States of the European Union in the field of patents contributes significantly to the integration process in Europe, in particular to the establishment of an internal market within the European Union characterised by the free movement of goods and services and the creation of a system ensuring that competition in the internal market is not distorted; CONSIDERING that the fragmented market for patents and the significant variations between national court systems are detrimental for innovation, in particular for small and medium sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims and claims relating to patents which should be revoked; CONSIDERING that the European Patent Convention ("EPC") which has been ratified by all Member States of the European Union provides for a single procedure for granting European patents by the European Patent Office; CONSIDERING that by virtue of Regulation (EU) No 1257/20121, patent proprietors can request unitary effect of their European patents so as to obtain unitary patent protection in the Member States of the European Union participating in the enhanced cooperation; 1 Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJEU L 361, 31.12.2012, p. 1) including any subsequent
    [Show full text]
  • The Agreement Establishing a Unified Patent Court and Its Impact on the Brussels I Recast Regula- Tion
    THE AGREEMENT ESTABLISHING A UNIFIED PATENT COURT AND ITS IMPACT ON THE BRUSSELS I RECAST REGULA- TION. THE NEW RULES INTRODUCED UNDER REGULATION (EU) NO 542/2014 IN RESPECT OF THE UNIFIED PATENT COURT AND THE BENELUX COURT OF JUSTICE* L’ACCORDO ISTITUTIVO DEL TRIBUNALE UNIFICATO DEI BREVETTI E LA SUA INCIDENZA SUL REGOLAMENTO BRU- XELLES I-BIS. LE NUOVE DISPOSIZIONI INTRODOTTE DAL REGOLAMENTO N. 542/2014 RELATIVAMENTE AL TRIBUNA- LE UNIFICATO DEI BREVETTI E ALLA CORTE DI GIUSTIZIA DEL BENELUX FABRIZIO MARONGIU BUONAIUTI Associate Professor of International Law University of Macerata Recibido: 03.12.2015 / Aceptado: 10.12.2015 Abstract: The present study deals with the agreement establishing a Unified Patent Court (UPC), signed by 25 EU Member States on 19 February 2013 and its impact on the rules on jurisdiction in civil and commercial matters as contained in Regulation (EU) No. 1215/2012 (s.c. “Brussels I Recast Regulation”), which replaces the pre-existing Brussels I Regulation. The study analyses the new rules introduced in the Brussels I Recast Regulation through Regulation (EU) No 542/2014, making provi- sion for the application of the rules on jurisdiction as contained in the Regulation to the UPC as well as to the Benelux Court of Justice, as judicial bodies common to several Member States. As concerns the UPC, the new rules introduced by Regulation No 542/2014 appear welcome, insofar as they provide for the enlargement of the territorial scope of the competence of the UPC itself, a competence that the agreement itself considers as exclusive. Nonetheless, the new rules fall short of addressing effectively the problems of coordination of the exclusive jurisdiction provided for under Article 24.4 of the Brus- sels I Recast Regulation in respect of actions concerning registration or validity of intellectual property rights, including European patents, with other heads of jurisdiction such as that provided for under Art.
    [Show full text]
  • Article Addormund 140213 2
    4th St.Gallen International Dispute Resolution Conference A PATENT COURT FOR EUROPE What’s at stake for users? Felix Addor ∗ Claudia Mund This contribution reflects all developments up to March 2012 A Patent Court for Europe 1 What’s at stake for users? Felix Addor 2 / Claudia Mund 3 Europe has a well-functioning and successful centralised patent application and granting procedure for 38 member states of the European Patent Organisation (EPO) but no unitary post-grant procedure. Attempts to create a European patent litigation system date back more than two decades. The latest proposal under discussion, the so-called Unified Patent Court, aims at establishing a solution for EU Member States but not for non-EU EPO members. The purpose of this paper is to give an overview of the developments in creating a uniform European post-grant procedure while, at the same time, contrasting them to the needs of users. Based on the latest proposal, possible solutions and options on how to integrate non- EU EPO members into a single patent judiciary in Europe are discussed. As we will see, options are limited, but there are ways to establish a pan-European Patent Court which would create a win-win situation for all EU and EPO member states and to truly serve the users’ needs. I. The Patent System in Europe II. The Importance of the EPO System in Europe III. Major Challenges of the EPO System 1. General 2. Cost of patent protection in Europe 3. Patent enforcement in Europe IV. Approaches to a Patent Court in Europe 1.
    [Show full text]