Unitary patent after Brexit

On the 23rd of June the referendum on whether the United Kingdom should leave the EU ended with the victory of the “leave” camp. On account of migration and bureaucratic centralization a long-standing issue resurfaced, namely that the British wanted economic cooperation rather than a political union. However, this does not mean an immediate change in the law: the negotiations as a result of which the United Kingdom will be truly independent from the EU are expected to last for two years. Still, in the field of intellectual property law, Brexit is going to stand in the way of a long-planned project: the unitary patent.

The Unitary Patent (UP) was supposed to replace the traditional European patent progressed in leaps and bounds, encouraged by the popularity of the cost-effective unitary European trademark (EUTM). The establishment of this patent requires the support of at least 13 Member States, and the ratification of the most important countries (Germany, France and with the exit of the UK, Italy) is essential. Countries outside the EU cannot join the Unitary Patent system. While a European patent does exist already, after receiving it one still has to validate it in the offices of each nation. However, the result of the British referendum now constitutes a great obstacle in the path towards the UP, since the negotiations about it are not expected to go forward until the country truly leaves.

It is possible that regardless of its exit the UK will continue to support the establishment of the Unitary Patent Court (UPC) to try to smooth over the conflict with the EU. However, the law states that as an outsider, the most important part of the project, the UP will no longer apply to the UK. It is not likely that negotiations will go too well for the UK anyway, as the leaders of the EU do not want other Member States follow in the UK’s footsteps. As the head of the European Commission, Jean-Claude Juncker has stated with a tyrannical severity quite inappropriate for a democratic leader, “deserters will not be welcomed back with open arms”.

At the same time, as the UK, one of Europe’s most important markets leave the Union, the UP becomes less attractive, since to have patent protection in both regions one would have to pay for two legal procedures.

Unitary Patent: coming in 18 months?

“Within the next 18 months this will be a reality…”

Despite the idea of the Unified Patent Court (UPC) is not in its infancy, it still has way more issues in practice (especially about putting it into practice) than acceptable. At the open meeting of the AIPPI’s Standing Committee on the Unitary Patent and Unified Patent Court (within the framework of the 46th World IP Congress); transitional measures, patent term extension, the appointment of judges were all identified as key issues of concern. Nicolas Morey (of the EPO), Judge Peter Neier-Beck (of the German Federal Court of Justice), Tina Chappell (of Intel) and Michael Frohlich (of BlackBerry) also showed up at the panel.

Ansley Merelle Ward, the secretary of the Committee said that there is a risk of conflicting decisions and a race to court, regarding to the most solicitous Article, the 83th. „The system is in danger of becoming the very thing it was intended to avoid” she said. The Committee has made two proposals concerning jurisdiction of patent issues and sustentative law issues under Article 83: the AIPPI members should urge the participating member states to take effective measures to clarify the meaning and effect of it, and to take effective measures to amend their national patent laws to harmonize with the UPC Agreement that differ from national laws.

The ratifications are expected at the end of 2016. Before the Agreement can come into effect, at least 13 member states (including Germany, France and the United Kingdom) need to ratify it. In the first wave only 25 of the 28 EU member states are taking part in the enhanced cooperation, Croatia and Spain are not planning to join to the Agreement, unlike Poland, who has only indicated it is improbable to join at the beginning.

As Judge Meier-Beck highlighted, there are not enough well-experienced judges, since most of the national judges have way less familiarity with patent disputes. (That is maybe partly the reason why some of the potential ones already begun their courses at the official Training Centre in Budapest.)

As Thierry Calame, the Committee co-chair said, AIPPI has two consultations underway: one concerns the relationship between UPC and EPO opposition proceedings; and the other one concerns UP renewal fees and UPC court fees.

Details have been sent to national and regional groups, with response due by November 16, and anyone interested is urged to take part. As Alan Johnson said: “within the next 18 months this will be a reality, and decisions have to be made”.

Rules of Procedure of the Unified Patent Court

The Preparatory Committee of the Unified Patent Court adopted the final text of the court’s Rules of Procedure on 19.10.2015. This international court is authorized from 01.01.2017 to decide in disputes related to European patents. The rules concerning defrayal and court fees can still change according to the results of the negotiations on them. The Rules of Procedure will formally be adopted with the decision of the Administrative Committee after the commencement of the provisional application of the international agreement on the Unified Patent Court.

The Rules of Procedure is one of the essential documents regarding the operation of the Unified Patent Court. It is of major importance not only for the judge candidates, but for the legal representatives acting on patent matters and for the parties to the proceedings as well. The final draft was elaborated by the legal working group of the Preparatory Committee in cooperation with the Drafting Committee consisting of patent law experts taking into account the incoming remarks in the course of public consultation and audition.

The report about the adoptation of the Rules of Procedure and the final text can be read on the homepage of the Unified Patent Court.

Unitary Patent: Italy decides to join the agreement

After the Court of Justice of the European Union rejected a challenge to the regime by Spain, Italy announced its intention to join the Unitary Patent and ratify the agreement in May.

In June, Italy’s parliament passed a resolution in favour of participating in the system and the country is now waiting for the European Council and Commission to formally accept its request.

Italy’s undersecretary of state to the Ministry of Economic Development, Simona Vicari and Benoît Battistelli, president of EPO met in Rome to discuss the upcoming introduction of the unitary patent. Vicari stated that the decision is coherent with the governent’s strategy, which aims at strengthening investments in innovation and internationalisation, providing an addition tool for IP right protection.

Battistelli welcomed Italy’s decision, stating that it is very good news for Europe, and the addition of the Italian market to the new patent scheme will increase and reinforce the attractiveness of the European market.

Source: WIPR

The renewal fees of the unitary patents are revealed

 

The WIPR reports:

The European Patent Office (EPO) has submitted proposals covering the renewal fees for the forthcoming unitary patent, with lawyers claiming that the plans may price out small businesses.

Benoît Battistelli, president of the EPO, has produced a report called ‘Proposals for the level of renewal fees for European patents with unitary effect’, in which two fee structures are outlined. Continue reading

Invalidation of Cubist Pharmaceuticals, cubicin

unitary-patent-articleAlthough methods of (medical) treatment claims are accepted in the US and Europe, such claims are still not accepted in China. Currently such claims have to be rewritten into so called Swiss-type claims. However, Swiss- type claims are not suitable for inventions involving merely changes in the dosage regimen and/or timing of administration. This was the problem faced by Cubist Pharmaceuticals, Inc. with its Chinese patent covering its block-buster drug cubicin. This is also the first ruling from the Supreme Court on its position regarding the dosage amount and timing of administration on determination of patentability in China. Continue reading