Author: Alex Frost
1 February, 2013
On 17th December 2012, two European Union Regulations were published. Regulation EU 1257/2012 creates Unitary Patent protection (EUP) (let’s call it the EUP Reg), and Regulation EU 1260/2012 sets out the translation arrangements for the EUP (let’s call it the Translations Reg).
The two Regulations are made under the Enhanced Cooperation provisions of the European Union (EU) allowing fewer than all EU states to adopt provisions affecting only participating states.
At the same time a Draft Agreement setting up a Unified Patent Court (UPC) was approved and has now been published in final form as Agreement 1635/12 dated 11 Jan 2013 (let’s call it the UPC Agreement). It will be available for signature and subsequent ratification by all EU states and a signing ceremony is planned for 18 February 2013.
This third Bulletin is companion to our first and second Bulletins also published today entitled The European Patent with Unitary Effect (EUP) and The Unified Patent Court (UPC). This third Bulletin provides, in the form of questions and answers, our thoughts on what it all means for you.
1) Who will want an EUP?
As there would be little or no cost saving, it is difficult to see any benefit to a proprietor interested in obtaining protection in fewer than five participating states (that is EPC states excluding a) non-EU states such as Switzerland and Norway, and b) any EU states that don’t sign up, such as presently Italy and Spain). On the plus side, there would be some simplification of procedure (a single EUP registration will be made, rather than multiple validations) and only one renewal to remember to pay (which has its pros and its cons!). On the negative side, an EUP puts “all eggs in one basket” for revocation more than nine months after grant, and relies for enforcement upon the unknown of the UPC.
However, we think an EUP could be attractive to applicants who are primarily concerned with portfolio building, and who have been prepared in the past to validate their EP cases in at least four or five states but would like more.
2) What will I have to do to get an EUP?
When the regulations and the UPC are up and running, it will be an option on grant of all EP cases to file a request at the EPO for “unitary effect” along with a translation of the whole specification into another EU language, in order to obtain an EUP in all the participating EUP states at the time.
3) Should proprietors opt-out of the UPC for EP Nationals?
The easy answer seems to be yes, at the first opportunity, before any one else starts a revocation action in the Central Division. You can always opt-in again if you want to seek an injunction covering all UPC states.
4) Does the UPC make it more attractive to applicants to file applications for National Patents in Europe rather than an EP?
We think that most applicants who are currently filing EP cases will continue to do so. The increased initial cost and complexity of national filings rather than an EP filing remains a disincentive. Importantly also, if clients want to include a national filing in FR, NL, IT, BE and various others, then they should not use the PCT as only EP Regional Phase entry is available in these countries.
That said, it is likely that all EP National patents validated from EP applications filed today will eventually come under the sole competence of the UPC, once the opt out period finally comes to an end after seven or fourteen years (see the answer to Q5 in our Bulletin on the UPC). Applicants who consider it very important to avoid having their EP National patents litigated in the UPC, such that a single decision would effect the patent rights in all UPC states, may find it attractive even now to file national patent applications at least in important states.
5) What language should be used for the whole text translation required for an EUP?
It might be most efficient to choose French or German, as claims translations are required in any case for the EP grant procedure. Further, if German is chosen, this translation would serve if proceedings are brought subsequently for infringement in Germany, or against a German infringer. However, for a longer description a cheaper language might be chosen such as Italian or Spanish!
Some proprietors may seek to make life difficult for a target competitor, by not using the language of the competitor.
6) Are there implications for patent protection in territories such as Hong Kong that allow mere registration of a patent effective in UK?
Current regulations do not provide for registration of an EUP in for example Hong Kong. Local governments may legislate to make this possible. If they do not, proprietors who want protection in for example Hong Kong based on a GB case should not request an EUP and instead validate in required countries.
7) What happens if an EP case is to be granted for a list of designated EPC states which does not include a currently participating EUP state?
This could happen in one three scenarios:
i) Designation of an EUP state has been formally withdrawn before EP grant, perhaps to avoid conflict with a corresponding national patent in the original country.
ii) The EP application was filed before 1st April 2009, and not all currently participating EUP states were designated. Note that only since 1st April 2009 have all available EPC states been designated with a single global fee.
iii) A current EUP state was not an EPC state at the time of the European filing date of the EP case. Malta joined 1st March 2007 and may well be an EUP state from the start date.
In any of these scenarios, it seems that a request for Unitary Effect could not be allowed, because the Regulation requires that an EUP must be effective over all current EUP states at the time of EP grant.