The EU patent is arriving: After decades of preparations and several major setbacks just before reaching the finish line, the EU patent and the Unified Patent Court (UPC) are slowly but surely becoming reality. Contrary to many assumptions, neither Brexit nor constitutional complaints in Germany have been able to derail the project to date.
Following the ratification by Germany in September 2021 and the subsequent ratification by Austria in January 2022 as the 13th member state, it is finally certain that the “EU patent” will be realized. On February 22, 2022, the Administrative Committee of the Unified Patent Court held its inaugural meeting in Luxembourg, at the seat of the Court of Appeal and the Registry of the UPC.
The entire project had been called into question at times by the UK’s withdrawal from the EU. Currently, however, it is rapidly progressing. The current status can be found on the Unified Patent Court’s official website.
The exact start date of the UPC’s activities now depends only on the progress of the preparatory work. You have the following options to keep up to date:
- observe the website of the European Patent Office;
- make sure to be added to our “EU Patent Alerts” mailing list;
- or follow us on Twitter (@Heuking_Patents).
The most important legal texts on the EU Patent
Updated on May 31, 2022 - the most important legal texts on the EU patent are - at least for lawyers:
- Regulation (EU) No 1257/2012 of 17 December 2012
- Agreement on a Unified Patent Court
- ROP - Rules of procedure of the Unified Patent Court (currently draft only, in English)
- Bill of the Federal Government on the Agreement on a Unified Patent Court
- Protocol to the Agreement on a Unified Patent Court on Provisional Application
- Rules relating to Feesfor Unitary Patent Protection
1. Regulation (EU) No 1257/2012 of 17 December 2012
Status
- Legislation formally completed.
- It will only apply if the Agreement has entered into force (Art. 18(2)).
- On the entry into force of the Agreement, see there Art. 89(1): if at least 13 Member States have ratified the Agreement (already completed), including Italy, France, and Germany.
Relevance
- Timing and geographical scope of application of the unitary effect of EU patents (Art. 4 (1) and Art. 18 (2))
- Guidelines for the level of annual renewal fees (primarily Art. 12 (3) (a))
- Determination of the applicable national law for the patent as an object of property (Art. 7)
- Determination of the applicable national law for compensation for damages (recital 13; supplemented by Art. 68 Agreement)
- Determination of the applicable national law for the scope of protection of the EU patent(Art. 5 (3) in conjunction with Art. 7, in conjunction with Art. 25 and 26 Agreement)
2. Agreement on a Unified Patent Court
Status
- Signed on February 19, 2013 (excluding Poland and Spain; Italy without consent to unitary effect, i.e. only for conventional EP patents)
- Entry into force only when ratified by at least 13 Member States, including the Italy France, and Germany, Art. 89(1).
- To date (May 24, 2022), sixteen Member States have ratified. Since Germany is not among them, however, the Agreement has not yet entered into force.
Relevance
- The content extends significantly beyond what the title suggests.
- It also applies to conventional EP patents, see Art. 2(g) in conjunction with Art. 3(c) and (d). For these an opt-out regarding the exclusive competence of the Court is possible in accordance with Art. 83.
- The Agreement also includes substantive patent law:
- Art. 25: Direct use of the invention
- Art. 26: Indirect use of the invention
- Art. 27 – 29: Limitations, Prior use, Exhaustion
As part of its scope of application, the Agreement takes precedence over national law. In addition, non-uniform national law might also apply (Art. 5 (3) in conjunction with Art. 7 Regulation (EU) 1257/2012).
- Art. 68: Compensation for damages
- This provision is likely not conclusive. In accordance with recital (13) of Regulation (EU) 1257/2012, the relevant national law is therefore also applicable separately for each country.
- Art. 6 – 14: Institutions / Composition of the court
- Procedural law
- Art. 31 – 33: Competence of the courts
- Art. 33 is of particular importance for the procedure, supplemented by the "Rules of Procedure."
The following will be new for German patent lawyers:
- Action for declaration of non-infringement of patents will be easily possible, Art. 32 (1) (b)
- Action for annulment possible even in case of an ongoing opposition period and in case of an ongoing opposition procedure; there is no provision similar to Section 81 (2) sentence 1 German Patent Act; Art. 33 (8) clarifies that an action for annulment is also possible without notice of opposition.
- "First come, first serve" situations: Example: If the applicant in the infringement case anticipates the action for annulment, it will remove the applicant in the annulment case's opportunity to submit an action for annulment to the central division, Art. 33 (4) sentence 2.
No provisions on patent vindication.
3. ROP - Rules of procedure of the Unified Patent Court
(only available as a draft, with final amendments)
Status
- Revised version formally adopted and published by the Administrative Committee on July 8, 2022.
- A consolidated version will be published soon.
- Up to the 14th draft, a panel of experts held non-public consultations. The 14th draft was then made available to the public on February 19, 2013, after the Agreement had been signed. Since then, the public has been able to comment on it and submit proposals. The 18th and final draft was published in 2017.
Relevance
- A self-contained and comprehensive set of rules governing all proceedings and actions before the Unified Patent Court.
- Also contains provisions that would be assigned to substantive law under the laws of Germany (e.g., in connection with inspection and invoicing).
Highlights include:
- Requirements for opt-out requests (Rule 5)
- Wider ability to use videoconferencing for the oral hearing (Rule 112)
- Orders and decisions will be automatically published after personal or confidential information has been removed (Rule 262)
- Access to certain information in pleadings or evidence may be prohibited or restricted (Rule 262A) - special non-disclosure measures such as for trade secrets
4. Bill of the Federal Government on the Agreement on a Unified Patent Court
Status
- On November 26, 2020, the Bundestag approved the German government's bill by a two-thirds majority.
- The Bundesrat also approved the bill unanimously on December 18, 2020.
- The Bundestag had originally passed a treaty law on the Agreement and the Protocol back in 2017 (BT-Drs. 18/11238 neu) The law was then not executed and its Article 1 (1) was declared null and void by decision of the Federal Constitutional Court.
- This time, the Federal Constitutional Court rejected two further urgent applications (to the decision).
- In the meantime, the law could be executed and promulgated.
Relevance
- Important step on the way to the creation of the Unified Patent Court. The Unified Patent Court will come.
- The Agreement will enter into force when it has also been ratified by Germany.
- Before that, the organizational capacity of the Unified Patent Court must be established. This will be done on the basis of the Protocol to the Agreement on a Unified Patent Court on provisional application (PPA, see next point).
- Only upon the entry into force of the Agreement, the jurisdiction will be transferred to the Unified Patent Court.
5. Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)
Status
- The PPA entered into force on January 19, 2022, after Austria deposited its instrument of ratification.
Relevance
- The PPA forms the basis for establishing the organizational capacity of the Unified Patent Court.
- The final preparations for the Unified Patent Court can now begin or are already underway. In this final phase, secondary legislation, in particular the Rules of Procedure, must be adopted, among other things. Judges will also be selected and appointed. Last but not least, the IT system must be tested for functionality.
- The phase of provisional application is expected to last eight months, so the unitary patent system could still come into force in 2022.
6. Rules relating to Fees for Unitary Patent Protection (RFeesUPP)
Status
- The Select Committee of the Administrative Council approved the Rules relating to Fees for Unitary Patent Protection on December 15, 2015.
Relevance
- The RFeesUPP sets out the amount of all fees and expenses to be paid by unitary patent proprietors to the EPO and specifies how they are to be paid.
- It also sets the amount of compensation for translation costs that eligible patent owners may receive from the EPO.
- The most important provisions of the Rules relating to Fees of the EPC apply accordingly to the unitary patent, namely the rules on how fees are to be paid to the EPO.