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How to select the european patent with the unitary effect (Unitary Patent)
Unitary Patent a unique protection for 17 states in Europe
With the recent ratification of Austria, the European Patent with unitary effect (“Unitary Patent”) will be introduced soon.
This title enables to get a patent protection by many European states. Presently 17 states have ratified the agreement and will participate with the Unitary Patent, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden, see https://www.epo.org/law-practice/unitary/unitary-patent.html.
The Council Regulation No 1257/2012 (hereafter “Unitary Patent Regulation”) sets out the details of the unitary patent. In particular it states that only a European patents having the same set of claims in respect of all the participating Member Sates shall be able to be selected as a Unitary Patent (Art. 3 of the Unitary Patent Regulation).
Before deciding whether to apply for the Unitary Patent it should be kept in mind that it is not possible to opt-out from the exclusive competence of the Unified Patent Court (UPC) for the Unitary Patents according to §83(3) of the UPC Agreement.
Request has to be filed one months after publication of mention of grant
The Unitary Patents will be managed by the European Patent Office (EPO). For that purpose a request for obtaining a Unitary Patent has to be filed within no later than one month after the mention of the grant published in the European Patent Bulletin, see Art. 9 (g) of the Unitary Patent Regulation.
Within the same period, during a transitional period, a translation has to be filed, either an English translation for patents having the language of proceedings in French or German, or a translation into any other official language of the European Union where the language of the proceedings is English (see Article 6 of Council Regulation 1260/2012).
Definite enter into force of the Unitary Patent depends on the deposit of the UPC Agreement by Germany
Entry into force of the Unitary Patent Regulation depends on the entry into force of the UPC Agreement, see Art 18 of Unitary Patent Regulation. The UPC Agreement will enter into force on the first day of the fourth month after the deposit the final ratification, here the German ratification.
Even though Germany has already ratified the UPC Agreement, it has not yet deposited the ratification in order to enable the Unified Patent Court enough time for the preparation and the recruitment of the judges in the phase of the provisional application period, which has started mid of January.
When the State Parties are confident that the Court is functional, Germany will deposit its instrument of ratification of the UPC Agreement, which will trigger the countdown until this Agreement’s entry into force and set the date for the start of the UPC’s operations.
Thus, the definite enter into force of the Unitary Patent Regulation is unknown.
However, it is expected that it will enter into force mid 2022 to begin of 2023.
EPO proposes to delay proceedings and early request for the Unitary Patent after the deposit of the ratification of Germany
In order to give applicants the possibility to request the Unitary Patent for EP applications that are scheduled for grant between the deposit of the ratification of Germany of the UPC Agreement and the entering into effect of the Unified Patent, the EPO has just published in the Official Journal January 2022 decisions providing the Applicant with several new options.
a) For applications for which a pre-grant notification under Rule 71(3) of the European Patent Convention (EPC) has been issued, in which communication the EPO communicates to the applicant the text intended for grant, 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: a corresponding form must be used and no prior agreement on the text proposed for grant must have been given yet by the applicant.
However, the applicant must still file a reply to the pre-grant communication according to Rule 71(3) EPC, i.e. pay the fees and file the translations of the claims. A request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed.
b) In order to facilitate obtaining the Unitary Patent, 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 Unitary Patent Regulation. The EPO will inform about formal deficiencies already before the entry into force of entering into effect of the Unified Patent, giving an opportunity to make corrections in due time.
Although the EPO has already communicated about these procedural measures, both possibilities are not yet in force and will be only available until the entry force of the Unitary Patent Regulation (i.e. when Germany triggers the system).
In order to reach the period from which on the EPO proposes to delay the proceedings, the applicant may request, for applications that are still in examination and a response to an Office Action has to be filed, a request for extension of the time limit to the maximum time limit.
For communications according to Rule 71(3) EPC providing with the text intended for grant, this option is unfortunately not available, the four month time limit being non extendible (except through further processing which implies costs and risks).
However, if the applicant does not agree with the proposed text, or if minor corrections are still to be made, he can file a disagreement with EPO including the respective new proposal. The EPO will then issue a new communication according to Rule 71(3) EPC, provided that the new text complies with the provisions of the EPC, so that a new four months period according to Rule 71(3) EPC starts.
Depending on the time the EPO takes to emit the new communication and on the actual date of triggering of the unitary patent system by Germany, the applicant may then be able to use the new procedures to delay the grant and request the unitary effect.
Entry into force of the protocol on provisional application of the UPC Agreement (PAP)
The European Council has just indicated on its website that the Protocol to the Agreement on a Unified Patent Court on provisional application (also called PAP) has entered into force yesterday, January 19, 2022.
This follows the deposition of the ratification instruments of said protocol by Austria, which was effective January 18, 2022, making the PAP being ratified by its thirteenth member state.
As explained in a previous post, the PAP ratification triggers the existence of the Unified Patent Court (UPC) as an international organization, which is a historic landmark in the field of European IP, after so many back and forth developments.
A lot of work remains to be done before the effective operation of the UPC can start. This includes in particular obtaining budgets, selecting judges, setting in place the administrative bodies and tuning the fully paperless case management system. According to a notice published by the UPC, at least 8 months will be necessary to be able to trigger the system.
Germany will have the final word to start the system, which will occur four months after it deposits its ratification instruments of the Unified Patent Court Agreement.
The European Patent Office has simultaneously announced it will also be ready to set up the Unitary Patent which is due to start on the same day as the operation of the UPC (https://www.epo.org/news-events/news/2022/20220117.html).
New opportunities will arise with the birth of these new tools. New strategies will have to be defined for future patent protection and patent litigation in Europe.
In the upcoming months, the professional integrated teams of LAVOIX, including fully qualified European Patent Attorneys and Attorneys at Law, will be committed to develop or refresh your knowledge of the new procedures, and to help you prepare your organizations for the effective start of the UPC and of the Unitary Patent (UP), so that you are able to use the new system at its best.
LAVOIX teams will be ready to act on day one, taking advantage of our geographic position at the heart of the UPC in Paris and Munich.
We will continue to regularly update the blog with news about the progress of the UPC and UP preparations. We will also provide substantive articles about crucial subject matters such as opt-out or stay in, and various details of UP and UPC procedures.
Stay in contact with us, as a historic new era in European IP starts…
Le protocole sur l’application provisoire de l’accord JUB
Le Protocole à l’Accord relatif à une Juridiction unifiée du brevet sur l’application provisoire (le PAP‑Protocole) a été initialement signé le 1er octobre 2015 pour établir une phase d’application provisoire (PAP) afin d’assurer « une transition en douceur vers la phase opérationnelle et garantir le bon fonctionnement de la Juridiction unifiée du brevet avant l’entrée en vigueur de l’Accord ».
Le gouvernement fédéral allemand a officiellement ratifié la loi d’approbation de la JUB le 13 août
La publication de la loi au Journal officiel fédéral met enfin un terme aux complications juridiques qui bloquaient le processus de ratification allemand et, par conséquent, l’établissement de la Juridiction unifiée du brevet (JUB).
Mais cela ne signifie pas que la JUB peut enfin commencer à fonctionner.
Avant que la JUB ne puisse réellement ouvrir ses portes, la phase préparatoire doit débuter.
L’Allemagne prévoit de ratifier le Protocole sur l’application provisoire au début de l’automne.
Selon ce Protocole, certaines parties de l’Accord JUB seront appliquées provisoirement avant son entrée pleinement en vigueur.
Pour que ce Protocole entre en vigueur, deux autres États membres de l’Accord JUB doivent encore le signer.
La mise en œuvre de ce Protocole dépend désormais d’un processus de ratification rapide par les juridictions des États membres.
Selon Alexander Ramsay, chef du Comité préparatoire de la JUB, il pourrait y avoir une JUB opérationnelle fin 2022, ou éventuellement début 2023 « si tout se passe bien ».
Again, and again: the UPC agreement is further challenged in Germany
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.
The current state of play towards the set up of the Unified Patent Court
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 ».