Unitary Patent System and the Unified Patent Court
The final agreement of the European Council on "grant and enforcement" under the unitary patent system are as follows:
- The Unified Patent Court is scheduled to enter into force within 2014 or 2015. The pre-grant procedure and opposition procedure are practically the same with the ones before the EPO.
- Validation process of a patent granted under the unitary patent system shall be filed only in an official language selected from English, French and German (thereby expecting much cost reduction).
- The first instance of an infringement action can be filed in any member states except for Spain and Poland. However, the Central Division based in Paris shall be the primary technical court which deals with all issues and appeals relating to validity of a patent. Two specialized sections will be established; one in London (chemistry, medicine, and bioscience), and the other in Munchen (mechanical engineering).
- Annual Renewal fees can be paid unitarily for unitary patents so as to cover all the EU member states (except for Spain and Italy).
The Unified Patent Court
◆ Main Points of EU Unitary Patent System
On December 11, 2012, the European Parliament authorized, by majority, two draft regulations on a unitary patent system. This paved a way to an enforcement of the Unified Patent Court, which has been long awaited. The Unified Patent Court is scheduled to enter into force in early 2014. According to this schedule, the first unitary patent will be issued during 2014.
Enforcement of the unitary patent system enables an issuance of a unitary patent in 25 EU member states (except for Spain and Italy) through one single administrative step. Under the unitary patent system, EPO will execute and manage the unitary patent.
The unitary patent system will co-exist with national patent systems in the member states and the EPC (European Patent Convention) system. The unitary patent system shares the same legal basis and procedure for granting with those for the European patents based on the current EPC. However, a post-grant phase is different. The applicant needs to decide, within one month after an application is granted, whether to proceed the granted application under the unitary patent system or under the EPC in which the applicant designates which country to enter.
Under the unitary patent system, the EPO will centrally manage patents, levy annual renewal fees, and distribute the fees to the member states which participate in the unitary patent system. For small entities, annual renewal fees are discounted.
A patent proprietor may not want to take a risk of losing his patent in all member states by one invalidation procedure. For such a patent proprietor, there is an option to obtain and retain a national patent in at least some states. In order for the unitary patent system to come into effect, at least thirteen member states need to ratify the package of new regulations. At this moment, it is said that the first unitary patent will be issued during 2014, as mentioned earlier.
The unitary patent will be treated as a single patent which is shared among the member states. Therefore, the patent is not required to be legally validated or managed nationally in each member state (i.e., not required to submit a translation for each designated state). Therefore, the unitary patent system can significantly save time and money of applicants.
Note that, the unitary patent system requires a patent application to be filed in one of the following languages: English, German or French. Further, under the unitary patent system or during a transitional period (maximum 12 years), if a patent application is granted either in German or French language, the applicant must submit an English translation. On the other hand, if the patent application is granted in English language, the applicant must submit a translation in one of the EU's official languages.
Unified Patent Court
Under the system of the Unitary Patent, Unitary Patents granted by the EPO has a legal force through the Unified Patent Court. It is not necessary to enter into a particular state nationally. That is, no national registration fee and no translation fee are required.
The Unified Patent Court has exclusive jurisdiction not only over Unitary Patents but also over EP patents based on the EPC (European Patent Convention). During the transitional period, a proprietor of an EP patent based on the EPC can request the Unified Patent Court to exclude the EP patent from the jurisdiction of the Unified Patent Court (this is called “Opt-Out). In this case, the out-put EP patent is under the jurisdiction of a national court.
The package of new regulations stipulates the Unified Patent Litigation System (UPLS) based on the International Agreement for establishing the Unified Patent Court. According to the UPLS,
The Court of First Instance includes the Central Division, the Local Divisions and the Regional Divisions. These divisions have panels comprising multinational judges. The Central Division is divided into three sections: London, Paris and Munich. (London section deals with cases related to pharmaceuticals, biotechnology and chemistry, Paris section deals with cases related to telecommunications, electrical machinery and everything else) and Munich section deals with mechanical engineering and weapons.) The general section of the Central Division is located in Paris.
Unitary Patents’ infringement and validation cases can be judged by panels in the Local and Regional Divisions of the Court of First Instance, which are located in member states. In this case, the panels comprise three legally qualified judges. In a case of counterclaim for revocation, additional one technically qualified judge is allocated on request from the panels or the parties.
Generally, infringement processes are referred to the Local or Regional Divisions where the infringement has occurred or the defendant has residence. However, validation processes need to be carried out in the Central Division (based in Paris) of the Unified Patent Court unless counterclaim is filed. If a case relates to both the infringement process and the validation process, these processes can be made in the Central Division of the Unified Patent Court. A panel of the Central Division of the Unified Patent Court judges a case. The panel comprises two legally qualified judges and one technically qualified judge with nationalities from different member states.
The specialized tribunal in Luxembourg will still serve as the Court of Appeal and the Court of Justice of the European Union (CJEU) as before. In the Court of Appeal, a panel comprises three legally qualified judges and tow technically qualified judges judge a case. The national courts in each member state continue to grant a legal force to national patents during the Transitional Period. After the Transitional Period has passed, the Unified Patent Court also judges national patents.
Q & A
- ◆ Which are member states for Unitary Patent?
As of April 1, 2013, all EU member states (excluding Spain and Italy) are members for the Unitary Patent. If Spain and Italy withdraw their disapproval for participation, Spain and Italy will also be member states for the Unitary Patent.
- ◆ What are Unitary Patent and Unified Patent Court?
In short, the EPO can grant a single patent which is effective across EU. A proprietor of a unitary patent can have an exclusive right in all member states but may receive a revocation which is effective in all member states through a single litigation in the Unified Patent Court.
- ◆ Can EP patent based on the EPC be unitary patent?
If an EP patent is granted after the effective date of the Unitary Patent Regulation, the EP patent can be the unitary patent even though the EP patent is based on the EPC (European Patent Convention).
- ◆ Can applicant choose which patent to have?
An applicant can freely choose any patent type among a newly unitary patent, an EP patent based on the EPC, and a national patent granted in each country.
- ◆ How much it will cost regarding Unitary Patent?
Costs regarding the Unitary Patent have not decided yet in detail. "HARAKENZO more" have to wait and see how much the unitary patent costs.
With regard to translation, descriptions of all unitary patents need to be filed in English or translated into English for at least 6 years (for maximum of 12 years). For an application filed in English, it is required to submit a translation thereof in another EU official language, while claims thereof should be translated into English, French and Germany, as before.
- ◆ How to file application for unitary patent?
The EPO accepts the filing and performs examinations as before.
- ◆ What is required to do after allowance?
An applicant can choose to designate a unitary patent or a national patent at registration. An opposition procedure is the same as that of an EP application.