Main characteristics of the new European patent system with unitary effect. Part 2
In an earlier post we gave a brief description of the new unitary patent system, in this one we will talk about its main characteristics.
- Regulatory framework
- Regulation (EU) 1257/2012, of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection
- Regulation (EU) 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.
- Agreement on a Unified Patent Court of February 19, 2013.
- When will it come into force?
The Agreement on the Unified Patent Court (“UPC Agreement”) will enter into force on the latest of the following events:
- The first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place (Germany, France and the United Kingdom).
- The first day of the fourth month after the date of entry into force of the amendments to Regulation 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“Brussels I”) in order to clarify the jurisdiction of the
As at January 25, 2016, the following countries had ratified the UPC Agreement: Portugal, Malta, Austria, Belgium, Denmark, France, Luxembourg, Sweden and Finland.
The status of the countries that have ratified the UPC Agreement can be found at the following link:
Regulation (EU) 1257/2012 will be applicable from the date after the entry into force of the UPC Agreement.
- What is the applicable transitional regime?
A transitional period of 7 years is established (extendible by up to 7-years) following the entry into force of the UPC Agreement for current European patents (the “classic” European patent).
Consequently, for seven years after the entry into force of the Agreement, owners of “classic” European patents may continue to file actions for infringement of said patent before national courts. Actions to invalidate such patents may also still be brought before national courts during that period.
- How is a European patent with unitary effect obtained?
A “classic” European patent must be filed and registered at the EPO, in the usual manner, and within one month from the time it is granted, an application for unitary protection of said patent should be filed.
- To opt in or out of the jurisdiction of the UPC?
The holder of a “classic” European patent filed or granted before the transitional period expires, may notify its intention to opt-out of the exclusive competence of the UPC.
If the opt-out right is not exercised, at the end of the transitional period the “classic” European patent will automatically be subject to the exclusive competence of the UPC.
Opting out does not preclude opting back in to the system by filing an application in this regard, provided that an infringement or invalidation action has not yet commenced at the national courts.
If a non-infringement or invalidation action is filed against a “classic” European patent at the UPC, the owner of said patent that has not opted-out may no longer exercise this right and will be forced to litigate before the UPC.
In light of the above, for a “classic” European patent, the decision to opt-out is extremely important and should be analyzed case by case bearing in mind the owner’s global strategy.
- Composition of the UPC
The UPC will have jurisdiction over both the validity as well as the infringement of patents and supplementary protection certificates.
It will have a multinational composition and be staffed by legally and technically qualified judges.
In particular, the UPC will have jurisdiction over:
- Unitary patents
- “Classic” European patents for which opt-out has not been requested
- Supplementary Protection Certificates
- Pending “classic” European patent applications or those filed after the entry into force of the UPC Agreement;
- Exclusive competence in respect of appeals filed against decisions by the EPO on the grant of unitary patents.
It will not have competence in respect of utility models or national patents.
It will be comprised of a Court of First Instance and a Court of Appeal.
- Court of First Instance
- Comprising a central division and many regional (for two or more contracting Member States) and national (also called locales) divisions.
- The central division will have its seat in Paris and two sections in London and Munich. The Paris seat will hear matters related to performing operations, transporting, textiles, paper, fixed constructions, physics and electricity patents. The Munich section will hear lawsuits regarding mechanical engineering, lighting, heating, weapons, and blasting patents, while the London seat will hear cases regarding chemistry, metallurgy and human necessities patents.
- Any participating Member State may request the creation of a national or regional division together with other participating Member States.
- Court of Appeal
The decisions of the Court of First Instance may be appealed at the Court of Appeal which will have its seat in Luxembourg.
- Which substantive law will be applicable?
The UPC Agreement establishes that the substantive law applicable will be Union Law (reference is made in particular to Regulation (EU) no. 1257/2012 and Regulation (EU) no. 1260/2012), the UPC Agreement, the Convention on the Grant of European Patents of October 5, 1973, other international agreements applicable to patents and binding on all the contracting Member States and national law.
The UPC may also request preliminary rulings at the Court of Justice of the European Union which will be binding.
- Can the conflict be submitted to mediation and arbitration?
The UPC Agreement also establishes a patent mediation and arbitration center with seats in Ljubljana and Lisbon.
The center will hear the same cases as the UPC with the exception that it may not revoke or limit a patent.
Arbitral awards issued by the center shall be as enforceable as UPC decisions.
In the next post we will talk about the options available for Spanish businesses with the new unitary patent.
Garrigues Intellectual Property Department
