Unitary Patent and Unified Patent Court www.bardehle.com Content 5 1. The patent-reform package 6 1.1 Legal basis 8 1.2 Legislative objectives 8 1.3 The legal instruments 8 1.3.1 The Regulation on the unitary patent (UPR) 10 1.3.2 The Regulation on the translation arrangements for the unitary patent (UPTR) 10 1.3.3 The Agreement on a Unified Patent Court (UPCA) 10 1.4 Entry into force and application of the provisions 11 2. The Unified Patent Court (UPC) 11 2.1 Organization 13 2.2 Competence 14 2.3 The judges 14 2.3.1 Composition of the panels 14 2.3.2 Qualification and selection 15 2.4 Procedure 15 2.4.1 Language of proceedings 15 2.4.2 Rules of Procedure 15 2.4.3 Representation 16 2.5 Stages of the proceedings 16 2.5.1 First instance proceedings and timing 16 2.5.2 Bifurcation 17 2.5.3 Evidence 17 2.5.4 Appeal procedure – basic outline 18 2.6 Costs 18 2.7 The future role of the Court of Justice of the EU (CJEU) 19 3. The course of implementation of the unitary patent 19 3.1 The Select Committee of the Administrative Council of the European Patent Organisation 20 3.2 The Preparatory Committee of the Unified Patent Court 21 3.3.Ratifications of the UPCA 24 3.4 National Preparatory Work 24 4. Alternatives for the proprietor 25 4.1 Cost benefits of the unitary patent 25 4.1.1 Renewal fees 27 4.1.2 Validation 28 4.1.3 The relevant comparison 29 4.2 National jurisdiction or Unified Patent Court 31 4.3 The bundle patent – opt-out and opt-in 33 5. Conclusions 3 Introduction The Agreement on a Unified Patent Court (UPCA) was signed on February 19, 2013. Those responsible for the unitary patent system have always made very optimistic forecasts about the progress of its implementation. The original schedule of the EU Commission expected the first unitary patents to be become in force in spring 2014. However, there have been legal and political obstacles to the necessary ratifications, the last ones being the Brexit referendum and its consequences as well as the complaint before the German Constitutional Court (BVerfG) against the ratification Bill. At present, expectations go into extremely different directions. Those anticipating an imminent decision of the BVerfG to dismiss the complaint expect that Germany will ratify before the Brexit becomes effective. 4 However, the German Constitutional Court conclusive solutions to the problems might 1. The patent-reform package has a long list of cases pending and its pro- be found, the question remains whether ceedings may be burdened with an addi- conflicting national interests would make tional problem not raised by the complain- it possible to come to unanimous positions ant but in other pending cases before the for revising the UPCA. So far, the history Court, namely that the judicial independ- of implementing the unitary patent is full ence of the Boards of Appeal of the EPO, of surprises and the users of the European the last instance to decide on the validity of patent system have to be prepared for all unitary patents in opposition proceedings, alternatives. has been called into question. A ratification by Germany before the Brexit becomes 1. The patent-reform package effective may have the consequence that the apparent problems connected with the Various attempts to create a community patent, participation of the UK remain unresolved i.e. a patent of the Union which is self-contained when the system becomes operative. Such in respect of grant and validity, have been made problems include that the EU Regulations since the late fifties of the last century and on the unitary patent cease to have effect in turned out to be in vain. Over the decades, the the UK after the Brexit. Furthermore, the main contested issues were a common court sys- UPCA presupposes that its member states tem and the language problem, which is always are member states to the EU and acknowl- a delicate question in Europe, in the present edge the supremacy of the Court of Justice context regarding the question into which lan- of the EU (CJEU) in interpreting EU law. guages the patent has to be translated. However, the latter requirement is in Eventually two developments made it possible conflict with clear and repeated statements to overcome obstacles on the way to a unitary of the British Prime Minister that the UK patent for the Union: will not accept the jurisdiction of the CJEU. Nevertheless, the UK Government states in First, the possibility of »enhanced cooperation« its Brexit White Paper that the UK intends among a group of EU states, created by the to explore staying in the Unified Patent Treaty of Amsterdam for situations in which Court and unitary patent system after the not all EU states are prepared to cooperate. It UK leaves the EU. makes progress possible, even if unanimity can- not be reached. Second, the decision to connect Those offering solutions to the above the new EU-title in the simplest manner with problems concede that the UPCA would the grant proceedings before the EPO and to have to be amended. Even assuming that design it as a mere option for the applicant. 5 1.1 Legal basis 1.1 Legal basis the UPCA. After the CJEU dismissed the actions of Spain against the regulations on the unitary The creation of the unitary patent patent, Italy joined the unitary patent project required three legislative acts which and became the 26th member of the enhanced constitute the patent-reform package, cooperation in September 2015. that is One EU Member State participating in ― the Regulation on the unitary patent enhanced cooperation has not signed the UPCA: (hereinafter UPR), Poland. ― the Regulation on the language regime for the unitary patent (hereinafter One EU Member State has neither participated UPTR), in the enhanced cooperation nor signed the ― the Agreement on a Unified Patent Court UPCA: Spain. (hereinafter UPCA).1 Croatia has become an EU Member as of 1 July 2013, i.e. after signature of the UPCA. The two Regulations were published on Decem- ber 31, 2012.2 The Agreement was signed by 24 Whereas Spain and Poland have taken political of the then 27 EU States on February 19, 2013.3 decisions to stay outside the unitary patent sys- tem, there is no information on the intentions of 24 EU Member States participating in the Croatia. All three states can still join the system. enhanced cooperation from the beginning have Poland can simply ratify the UPCA. Spain and signed the UPCA: Croatia would have to join the enhanced cooper- ation before. Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Germany, Denmark, Estonia, Finland, 10 EPO Member States – Albania, Switzerland/ France, United Kingdom, Greece, Hungary4, Liechtenstein5, Iceland, Monaco, Macedonia, Ireland, Lithuania, Luxembourg, Latvia, Malta, Norway, Serbia, San Marino and Turkey – are Netherlands, Portugal, Romania, Sweden, not EU Member States. Slovenia, Slovakia.In addition, Italy has signed 1 OJ EPO 2013, 287. 2 Regulation (EU) No 1257/2012 of the European Parliament and the Council of December 17, 2012 implementing enhanced in the area of the creation of unitary patent protection and Council Regulation (EU) No 1260/2012 of December 17, 2012 imple- menting enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, OJ EU L 361 of December 31, 2012, p. 1 and p. 89. 3 Out of the 26 countries participating in the enhanced cooperation for the time being, Poland has not signed so far. Spain is 6 not participating in the enhanced cooperation. Italy signed the Agreement, although it decided to participate in the enhanced cooperation only later on. 4 The Hungarian Constitutional Court found in June 2018 that the Hungarian Constitution has to be changed to properly imple- ment the system (X/1514/2017). 5 Obligatory common designation under the EPC. The 38 EPO Member States and their participation in the patent-reform package 7 1.2 Legislative objectives The patent-reform package does not involve 1.3 The legal instruments 1.3 The legal instruments any change for non EU Member States. They 1.3.1 The Regulation on the stay with the European bundle patent and the Whereas the unitary patent is a creation of the unitary patent (UPR) jurisdiction of the national courts. Poland, European Union, it is fundamentally different participates in enhanced cooperation but has from the other industrial property titles of the not signed the UPCA and has, at present, no EU, the Community trademark, the Commu- intention to sign. The two regulations will not be nity design and the Community plant variety: applicable in Poland without entry into force of it is not granted by an EU agency but by the the UPCA (see in detail, pts. 1.4 and 4.1 below). European Patent Office (EPO). The EPO is the In its decision C-146/13, the CJEU did not executive organ of the European Patent Organ- address the argument in the Attorney General’s isation which is an independent international opinion that the participating states are obliged organisation. The unitary patent system has to ratify the UPCA in order to implement the been realized by three different legislative acts enhanced cooperation. because there are different legislative compe- tences for the different subjects. For the state of ratifications, see pts. 1.4 and 3.3. 1.3.1 The Regulation on the unitary 1.2 Legislative objectives patent (UPR) The unitary patent regulation and the EPC are The unitary patent is intended to interlinked.