A Brief History
Attempts to provide a single patent for the single market go back almost to the original founding of the European Coal & Steel Community in 1951, but these have failed repeatedly.
Separate negotiations in the 1960s led to the hugely successful European Patent Convention (EPC), which came into force on 1 June 1977 and created the European Patent Office (EPO). The EPC is an International treaty which any European country can join. It is entirely separate the EU (and there have been periods in the past when some EU members were not members of the EPC). At present the EPC covers all EU members plus other non-EU countries such as Switzerland, Norway and Turkey.
After the EPC, multiple further attempts to agree an EU-wide patent system, or at least a common patent court, also failed. In 2007 the European Commission started yet another set of negotiations, which aimed to create a community patent system and a community patent court system that was separate from the EU courts. This failed when the Court of Justice of the European Union ruled that it was contrary to EU law. The Commission then proposed to use “enhanced co-operation”, to allow a system to be created that only covered those EU states that wanted to participate and EU regulations were passed to create the Unitary Patent. In 2015 the CJEU ruled that this was legal. Separately an agreement for the Unified Patent Court was created as an International treaty.
Some of the issues and disputes that have arisen on this topic over the last few years have been discussed by Scott & York in earlier news posts, at
Spain, The Unitary Patent and costs (again)
Unitary Patent Update
The UK Government gets its numbers wrong over the benefits of the European Unitary patent and Unified Patent Court.
Application Costs for the Unitary Patent – More Expensive?
The European Unitary Patent Moves Forwards (Again…)
Delay to EU Patent
EU Patent Agreed – not for Italy or Spain
The Unitary Patent is created by a series of EU regulations made under “enhanced co-operation”. The Unified Patent Court is created by an International treaty and is legally separate from the EU. Neither system covers the whole of the EU. Spain and Croatia are not participating. Poland is part of the Unitary Patent but has not yet signed the agreement for the Unified Patent Court. Neither system has come into force yet.
The Unitary Patent – How it works
The Unitary Patent is a bolt-on to the existing European patent system under the EPC. Under the current European patent system, a single European patent application is filed at the EPO, and is examined and granted by the EPO. At the time of grant, the applicant can decide which of the available countries should be covered by the European patent. The European patent then becomes a bundle of separate and independent national patents in each country that is chosen (with the exception that Switzerland and Liechtenstein have agreed that they will be treated as a single territory, chosen as a unit and covered by a single patent).
The Unitary Patent will simply be another available choice at the time of grant, and takes the form of a single territory that can be chosen as a unit and covered by a single patent in the same way as Switzerland and Liechtenstein. However, if the applicant chooses the Unitary Patent, it cannot also ask for the European patent to become an independent national patent in any of the same countries.
The Unitary Patent – The Cost
Since the Unitary Patent is simply an option that can be chosen at the time of grant, it has no effect on the pre-grant costs of a European patent. Therefore at this stage it has exactly the same cost as getting patent coverage in Europe via the existing EPC procedures.
Various costs arise at the time of grant of a European patent. The original application must be in English, French or German. At grant, the claims must be translated into the other two official languages. These are requirements of the EPC. Additionally, the countries to be covered by the granted patent may impose their own requirements, which are typically requirements for additional translations. Some countries, including France, Germany and the UK, do not impose any translation requirements. Most countries require translation of the claims, or the claims and the description, into a local language. In the longer term, the Unitary Patent will not require any translations, but for an initial transitionary period (of up to 12 years) it will be necessary to translate the description so that it is available in English plus one other official EU language. Therefore the costs at the time of grant are similar to those for many existing countries in the EPC system, but higher than for France, Germany and the UK.
It is necessary to pay an annual fee to keep a patent in existence after grant. Renewal fees for a Unitary Patent have been set so as to be approximately the same as the total of paying renewal fees for a patent in each of France, Germany, the Netherlands and the UK (the four most frequently chosen countries in the EPC system). Therefore the cost of renewal fees will be greater than the fees currently paid by people who bring a European patent into force in France, Germany and the UK only (a very common choice), but less than the fees paid by those who bring a European patent into force in five or more countries. However, there is a loss of flexibility, in that it is possible at present to stop paying fees, and allow a patent to lapse, in selected countries while keeping it going in other countries. With a Unitary Patent this is not possible and the choice is only between paying the fees or allowing the Unitary Patent to lapse for the whole territory covered.
The Unified Patent Court – Structure
The Unified Patent Court will be the only court with the power to hear cases relating to Unitary Patents. Additionally, the UPC will in future also be the only court with the power to hear cases relating to national patents granted by the EPO, i.e. European patents as they currently exist. For an initial transitional period of 7 years (extendable to 14 years), it will be possible to opt out of the UPC for a European patent, by means of a register that will be kept by the EPO.
The Unified Patent Court will be an entirely new specialist patent court system. All patent infringement actions must be brought at the Court of First Instance, which will have a large number of divisions spread across the EU. Each division will have its own language requirements. All patent revocation actions must be brought at the Central division of the UPC, which is based in Paris with branches in Munich and London. Each case will be heard by three judges, who cannot all come from the same country, and a fourth, technically qualified, judge may also be present. There will also be an appeal court based in Luxembourg.
The Unified Patent Court – Laws
The UPC must base its decisions on EU law, the agreement setting up the UPC, the EPC, relevant International agreements and national law.
The basic definition of infringement is set out in the UPC agreement and is generally similar to the infringement law of most countries around the world, and includes various common exemptions. The fine details and precise meanings of these provisions are likely to be influenced most strongly by national laws as the other sources of law for the UPC do not include an existing history of patent infringement laws and decisions. The UPC will have the normal powers to impose damages and an injunction.
The UPC agreement states that a patent may only be revoked on the grounds set out in the relevant part of the EPC, so revocation at the UPC is likely to follow existing EPO practice very closely.
The Unified Patent Court – Procedure and Representation
Court procedure will be largely paper-based, with short oral hearings. It aims to be fast, with revocation actions taking no more than 14 months from initial filing of a petition at the court to a final written decision. There will be limited discovery, limited use of expert witnesses and very little scope for cross-examination compared with procedure in the UK High Court. However, the UPC will have strong powers to allow inspection of the premises of a presumed infringer in order to find and preserve evidence, including the power to permit a surprise inspection.
Qualified lawyers from the member states will have the right to conduct proceedings and appear before the UPC. These rights will also extend to many national patent attorneys and European Patent Attorneys.
The paper-based procedure and the representation rights for patent attorneys are likely to allow smaller cases to be heard at a reasonable cost, but it will not be possible to determine costs accurately until the court is running.
Article by Alasdair Kennington, Scott & York IP Law