On 26 April 2018, the UK government ratified the Unified Patent Court Agreement, bringing one step closer the possibility of achieving a Unitary Patent effective in multiple participating European countries, as well as the setting up of a new international court to rule on infringement and validity disputes. Ratification by Germany is now the last major obstacle that stands in the way of implementation of the new arrangements – but this is currently on hold, pending the outcome of a challenge filed with the German Constitutional Court. If and when this last obstacle is removed, the new system will come into force.
The European Patent Office has existed since 1978, and already grants European patents covering over 40 countries, both inside and outside the European Union. However, upon grant, a European Patent (a “Classical European Patent”) must be separately validated in each individual country in order to come into force - often involving translations and appointment of local attorneys at significant cost. After grant, each national validation is treated separately as far as matters such as renewals and infringement actions are concerned.
Under the new system, a “European Patent with Unitary Effect” (or Unitary Patent) will be available upon grant of a European patent application, as an optional alternative to a “Classical European Patent” – which will allow a much more streamlined (and potentially significantly cheaper) procedure for bringing the patent into force in all participating countries. Such Unitary Patents will automatically come under the jurisdiction of the new Unified Patent Court (UPC), which will have major divisions based in London, Munich and Paris, as well as subsidiary divisions in a number of other locations. The UPC will have jurisdiction to judge on issues of both infringement and validity of Unitary Patents and make orders that are effective in all participating countries. This will potentially lead to a substantial cost saving compared to the current country-by-country procedures.
The UPC will also, by default, have jurisdiction over existing and future “Classical European Patents”, insofar as they cover participating countries. However, for the proprietors of European patents that have been validated on a country-by-country basis and who do not wish to submit to such jurisdiction (for example, because of the possibility of central revocation), there will for at least the first seven years be the option to opt out of the UPC system.
At present, the UPC Agreement has been ratified by Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and the United Kingdom. When Germany ratifies, the new system may be expected to enter into force in respect of these countries, along with any other EU countries which have ratified in the meantime. Ratifications are expected in due course by Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia and Slovenia. Croatia, Poland and Spain have indicated that they will not be participating in the new system. For all countries covered by a European patent that are not participating in the new system, national validation will remain the way to achieve protection, just as at present, and the ensuing national patent rights will not be subject to the jurisdiction of the UPC.
For more specific advice, or if you have any questions on this or any other IP-related issue, please contact the partner with whom you usually deal or email email@example.com.
Bromhead Johnson 14.05.2018