The European Patent with Unitary Effect

At present, it is uncertain whether, when, and in which countries the “EU patent” will enter into force. The relevant international Agreement has already been ratified by 16 states (as of June 29, 2020). The current status of ratification is shown on the European Council website.

The win of “Leave” in the Brexit referendum and the UK’s withdrawal from the EU on January 31, 2020, however, are raising doubts about the project. In addition, the German Federal Constitutional Court annulled the German Consent Act by decision of February 13, 2020, published on March 20, 2020. Since ratification by Germany is mandatory for the Agreement to enter into force, it is anyone’s guess at the moment whether, when, and how the EU patent might still become reality – even though the Federal Minister of Justice announced on March 26, 2020 that she would continue to pursue the project.

Currently, there is actually therefore no need to worry about the EU patent yet. It is sufficient to be included on our "EU Patent Alerts" mailing list or follow us on Twitter (@Heuking_Patents). You will then receive an automatic notification as soon as things get serious.

 

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If you have any questions, please do not hesitate to contact us.

Publications

Legal requirements for a new attempt to ratify the UPC Agreement – How can it still be saved in spite of Brexit and the Federal Constitutional Court decision? – May 15, 2020, Bulletin of the German patent attorneys, jointly with Cem Karaosmanoğlu and Miran A. Aymaz    

Ist das EU-Patent am Ende? - May 29, 2015, Deutsche Handwerkszeitung

EU-Patent: Mittelstand erwartet komplizierte Rechtslage - September 10, 2015,  Markt und Mittelstand

The EU Patent – A Dream or a Nightmare? - December 2013, Update IP, Media & Technology 

The most important legal texts on the EU Patent

Updated on November 16, 2020 - the most important legal texts on the EU patent are - at least for lawyers:

All three texts and the overview are included in our "EU Patent" book. The book can be ordered by email to patent@heuking.de.

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, including UK, 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)) – there is no fee table yet, however
  • 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)

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 UK, France, and Germany, Art. 89(1).
  • To date (June 29, 2020), 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).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.

Status

  • To date only in draft form.
  • Currently, the 18th draft version is available.
  • Up to the 14th draft version, an expert committee provided advice in a manner not open to the public. The 14th draft version was made available to the public after initialing of the Agreement on February 19, 2013. Since then, the interested public can give an opinion on this and submit proposals.
  • The 18th draft version is the preliminary result, but likely not the final text.

Relevance

  • Procedural law
  • There are also rules for the submission of documents and for inspection. 
  • A closed and comprehensive regulation on all processes before the EU patent courts. Also includes provisions that under German law would be allocated to substantive law (e.g., in connection with inspection and invoicing).
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