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Although the German Parliament («Bundesrat») recently voted in favor of the ratification of the Unified Patent Court Agreement (UPCA) (that we reported here), and despite the political will (see there), the German ratification of the UPCA is again put on hold.

The German Federal Constitutional Court (FCC) advised that that two new constitutional complaints were filed on the very same day on which the Bundesrat approved the ratification (18th December 2020).

One of the complaint, filed by Düsseldorf lawyer Ingve Stjerna, who already filed an earlier constitutional complaint in 2017, aims at obtaining an interim order to cease the ratification process until a decision on the merits.

The content of the complaints is not yet known.

In any case, and as a result of these complaints, the Federal Presidency already confirmed that the ratification process will be deferred until the case is cleared by the FCC.

The German Parliament (Bundestag) has already filed on 8 January 2021 a statement in the proceedings for the grant of an interim injunction. Further, on January 13, 2021 the German Committee on Legal Affairs and Consumer Protection has recommended that the Bundestag also takes part and files further statements in the main proceedings.

The FCC can dismiss the complaints as inadmissible or examine them on their merits. If interim injunction will be accepted and the decision will be taken only in the main proceedings, this would then severely delay the process. Indeed, the first FCC decision was issued three years after the filing of the first complaint.

This new hurdle together with the departure of the UK from the EU and the UPC opens a new chapter in the long story of the implementation of the unitary patent package in the EU.

By order of June 23, 2021, the German Federal Constitutional Court (FCC) rejected two applications for preliminary injunction against the Act of Approval that was adopted on December 18, 2020, for the purposes of ratifying the Agreement of 19 February 2013 on a Unified Patent Court (UPC Act of Approval).

This decision was highly expected because the process of ratification of the UPC Act of Approval and thus, the establishment of the UPC has been delayed until the ruling of the Court.

The violation of fundamental rights alleged by the plaintiffs is considered by the FFC insufficiently asserted and motivated.

The plaintiffs failed to demonstrate why and how the Act of Approval, in its organisational structuring of the Unified Patent Court and in the legal status granted to the judges, could violate the principle of the rule of law established in Article 20(3) of the German Constitutional Law in a way that would interfere with the principle of democracy.

This decision seems to clear the way for the deposit of the German instruments of ratification.

The many hurdles against the implementation of the UPC and the Unitary Patent seem to be slowly overcome.

Some say that the new system could be in force no later than 2022.

The Unified Patent Court Agreement will enter into a provisional preparatory stage once 13 signatory states of the Agreement including Germany, France and the United Kingdom and having ratified said Agreement have ratified or expressed their consent to be bound by the Protocol on Provisional Application (A.3(1) of the Protocol).

France ratified the Agreement and also ratified the Protocol on 23 May 2017.

Lately (27th September 2021), Germany deposited its instrument of ratification of the Protocol and is expected to ratify the Agreement once the preparatory work has progressed sufficiently and the participating Member States are confident that the UPC can start in an orderly manner.

On the same day, Slovenia also ratified the Protocol, but has not yet ratified the Agreement.

As of today, 10 of the required 13 UPC states have ratified the Protocol (France, Belgium, Bulgaria, Denmark, Estonia, Finland, Italy, Luxembourg, the Netherlands, Sweden). Austria and Malta are expected to be the next ones.

As reported by the Unified Patent Court Preparatory Committee, « it is expected that the two further required ratifications will soon be attained triggering the implementation of the UPC as an international organization ».

The EPO’s Rules relating to Fees have been amended by decision of the Administrative Council of 15 December 2021. The amended version of the Rules relating to Fees is applicable as from 1 April 2022.

An evaluation of the fee adjustments indicates a general increase of about 2.5% for most fees.

Raised fees concern in particular the fees for:

– Filing fee (EP regional phase) : 130 EUR (increased by 5 EUR),
– Filing fee (direct EP application) : 130 EURO (increased by 5 EUR),
– Search fee : 1390 EUR (increased by 40 EUR),
– Designation fee: 630 EUR (increased by 20 EUR),
– Examination fee: 1750 EUR (increased by 50 EUR),
– Opposition fee: 840 EUR (increased by 25 EUR),
– Appeal fee: 2785 EUR (increased by 80 EUR),
– Grant fee (not more than 35 pages): 990 EUR (increased by 30 EUR)
– Grant fee (more than 35 pages): 990 EUR (increased by 30 EUR) plus 16 EUR for the 36^th and each subsequent page (increased by 1 euro).

As a consequence, in case procedural steps for EPO patents or patent applications are due in mid-2022 or in case you wish to use any of the EPO’s services concerned by the fee raise, it can be worthwhile to take the necessary steps so that the respective fee can be paid before 1 April 2022.

For more details on the new fee schedule, it may be referred to the corresponding communication from the EPO available under :
– https://www.epo.org/law-practice/legal-texts/official-journal/2022/01/a2.html.

The European Patent with unitary effect (“Unified Patent”) will be introduced soon. The final stage of the preparatory work will be accomplished by the end of this summer and the final missing ratification will then be deposited by Germany.

In order to give applicants the possibility to obtain Unitary patent protection for EP applications that are scheduled for grant between the deposit of the final ratification and the entering into effect of the Unified Patent, the EPO announced the following measure for deferring grant.

For applications for which a notification under Rule 71(3)EPC has been issued, the applicant may file a request for delay of grant until the entry into effect of the Unitary Patent.

The request for delay of grant must meet several formal requirements: The corresponding Form 2025 must be used. No agreement on the text proposed for grant must have been given yet by the applicant.

Further, the deadline of four months for replying to the notification R71(3)EPC is not altered.

In order to facilitate obtaining Unitary Patent protection, during the same period, the EPO will accept early requests for unitary effects, thus giving applicants the possibility to shift administrative work for unitary protection to before the effective date of entry of the Unified Patent.

The formal conditions for these early requests for unitary effect comprise: The notification according to R71(3)EPC has to be issued. While the request can be filed by other means, it is strongly recommended to file it online using the corresponding form UP7000.

Please bear in mind that these measures are not yet in force, but depend on the date at which Germany ratifies the agreement on a Unified Patent Court.

This IP Alert is for information purposes only and does not constitute legal advice.