3 The draft unitary patent Regulation
and agreement on the UPC
Legal base in the EU Treaties
18. The basis of EU action in the field of intellectual
property rights and their protection is Article 118 of the Treaty
on the Functioning of the EU (TFEU):
In the context of the establishment and functioning
of the internal market, the European Parliament and the Council,
acting in accordance with the ordinary legislative procedure,
shall establish measures for the creation of European intellectual
property rights to provide uniform protection of intellectual
property rights throughout the Union and for the setting up of
centralised Union-wide authorisation, coordination and supervision
arrangements.
Articles 3 and 6 to 8 of the draft
unitary patent Regulation and co-decision negotiations
19. Since political agreement ("a general
approach") on the unitary patent Regulation was reached in
June 2011,[10] it has
been the subject of negotiations between the Presidency, the European
Parliament and the Commission under the co-decision procedure,
with a view to agreeing a deal at first reading. The Council's
position in these negotiations was based on the text agreed at
the general approach, which we set out below.
20. Article 3 defines the unitary patent. Articles
6 and 7 define what acts amount to a direct and indirect infringement
of the unitary patent, and Article 8 lists areas of activity which
are typically patent-free. It is of note that the draft unitary
patent Regulation does not define what amounts to a valid unitary
patent, or what the scope of a unitary patent should be.
ARTICLE 3—EUROPEAN PATENT WITH
UNITARY EFFECT
21. Article 3 of the Regulation is intended to
provide for the creation of the uniformly protected intellectual
property right mentioned in Article 118 TFEU:
(1) European patents granted with an identical
scope of protection in respect of all participating Member States
shall benefit from unitary effect in the participating Member
States provided that their unitary effect has been registered
in the Register for unitary patent protection referred to [...]
(2) A European patent with unitary effect
shall have a unitary character. It shall provide uniform protection
and shall have equal effect in all participating Member States.
A European patent with unitary effect may only
be limited, transferred, revoked or lapse in respect of all the
participating Member States.
A European patent with unitary effect may be
licensed in respect of the whole or part of the territories of
the participating Member States.
ARTICLE 6—RIGHT TO PREVENT
THE DIRECT USE OF THE INVENTION
22. Article 6(1) provides that "the European
patent with unitary effect" (the unitary patent) "shall
confer on its proprietor the right to prevent any third party
not having the proprietor's consent from the following:
(a) making, offering, placing on the market or
using a product which is the subject matter of the patent, or
importing or storing the product for those purposes;
(b) using a process which is the subject matter
of the patent or, where the third party knows, or should have
known, that the use of the process is prohibited without the consent
of the proprietor of the patent, from offering the process for
use within the Member States;
(c) offering, placing on the market, using, importing
or storing for those purposes a product obtained directly by a
process which is the subject matter of the patent".[11]
ARTICLE 7—RIGHT TO PREVENT
THE INDIRECT USE OF THE INVENTION
23. Article 7(1) provides that the unitary patent
"shall confer on its proprietor the right to prevent any
third party from supplying or offering to supply within the participating
Member States any person without the proprietor's consent, other
than a party entitled to exploit the patented invention, with
means, relating to an essential element of that invention, for
putting it into effect therein, when the third party knows, or
should have known, that those means are suitable and intended
for putting that invention into effect."
24. By virtue of Article 7(2) paragraph 1 above
"shall not apply when the means are staple commercial products,
except where the third party induces the person supplied to perform
any of the acts prohibited by Article 6."
25. By virtue of Article 7(3) "[p]ersons
performing the acts referred to in Article 8(a) to (d) shall not
be considered to be parties entitled to exploit the invention
within the meaning of paragraph 1."
ARTICLE 8—LIMITATION OF THE
EFFECTS OF THE EUROPEAN PATENT WITH UNITARY EFFECT
26. Article 8 stipulates that the rights conferred
by the unitary patent shall not extend to certain acts, including
acts done privately for non-commercial purposes, experiments on
a patented invention, and trials relating to human and veterinary
medicines.
CO-DECISION NEGOTIATIONS WITH THE
EUROPEAN PARLIAMENT
27. On 19 January 2012 the Minister wrote to
update us on the progress of the co-decision negotiations. She
summarised the main changes as follows:
- New Recital 11a makes reference
to provisions on damages in the enforcement Directive (2004/48/EC),
not governed by the unitary patent Regulation.
- Recital 16 and corresponding Article 15(2) refer
to taking account of the needs of small and medium sized enterprises
in setting fees.
- New Recital 21b urges participating Member States
to ratify the Agreement on the unified patent court in accordance
with national constitutional and parliamentary procedures and
take steps for the court to be operational as soon as possible.
- Articles 6-10 are clarified to refer only to
territories where the patent has unitary effect (see Article 22).
- Article 12(2) is expanded to clarify that the
Select Committee of the Administrative Council of the European
Patent Organisation will consist of representatives of the participating
EU Member States, together with an observer from the Commission,
and will take decisions with due regard for the position of the
Commission.
- Article 20 is changed so the Commission reports
on the operation of the system after three years from the
first unitary patent taking effect, and every five years
thereafter (from six and six previously).
- Article 21 is amended to require participating
Member States to notify the Commission of implementing measures,
adopted by the date in Article 22, or the date from which the
unified patent court has exclusive jurisdiction in that Member
State.
- Article 22(2) sets out the application date of
the Regulation as being 1 January 2014 or the date of entry into
force of the Agreement on the unified patent court, whichever
is later. European patents shall only have unitary effect for
the participating Member States in which the unified patent court
has exclusive jurisdiction at the date of registration (of the
unitary effect). The consequence of this should be that the European
patent has effect as a national patent in other States designated
in the application, providing any national requirements are met.
- Article 22(4a) distinguishes between the date
of 1 January 2014 for ensuring administrative arrangements are
in place at the European Patent Office as required by Article
12, and the date for implementation of measures ensuring that
unitary effect can be inscribed in the European Patent Register
which must be by the time the unified patent court has exclusive
jurisdiction for the state concerned.
Overview of the draft Agreement
to establish the UPC
28. Article 1 establishes the creation of the
UPC as a court common to the contracting States with exclusive
jurisdiction for European patents and European patents with unitary
effect (unitary patents). Article 2 provides definitions for certain
terms used in the agreement. Article 3 describes the scope of
the UPC's jurisdiction. Articles 3a and 3b deal with legal status
and liability of the UPC. Article 4 specifies that the UPC will
be made up of a court of first instance, a court of appeal and
a registry. Articles 5-9 outline the functions of these parts
of the court.
29. Articles 10-14 outline the duties and obligations
of judges of the UPC, including eligibility criteria, appointment
and training (see further below).
30. Article 14a specifies that the UPC shall
respect the primacy of EU law and apply the entire body of EU
law. Article 14b makes provisions to ensure the proper application
and uniform interpretation of EU law. Specifically, provisions
are made to ensure the UPC refers questions on the interpretation
of EU law to the Court of Justice. Article 14c sets out joint
liability of the contracting States should the UPC fail to apply
EU law. Article 14d requires that the contracting States ensure
the UPC complies with their obligations under EU law. Decisions
of the UPC will be directly attributable to the contracting States.
31. Article 14e-14i sets out the applicable law
for the UPC, including listing allowable defences within the court.
Articles 15 (bifurcation—see further below) and 16 describe
the jurisdiction of the UPC. Article 17 allows for the creation
of mediation and arbitration centres.
32. Articles 18-21 set out the financing requirements
of the UPC (see further below). The court shall be self-financing
with fees set and reviewed periodically by an administrative committee.
Any shortfall in the budget of the court would be provided by
the contracting States.
33. Articles 21a-28 set out the organisational
and procedural provisions relating to the UPC; this includes outlining
who is responsible for representing parties in the UPC.
34. Articles 29-31 describe the language arrangements
of the Court (see further below). Articles 32-34 set out the procedures
before the UPC and the rules for evidence.
35. Articles 34a-44a deal with the powers of
the UPC, including the provision of temporary and permanent injunctions.
Articles 45-47 set out how appeals will be dealt with.
36. Articles 49-56 describe the method that the
UPC will use to reach decisions and then to ensure that the decisions
are enforced.
37. Articles 57-57b present the details of how
the UPC will be implemented and operated following agreement.
38. Article 58 outlines the transitional arrangements
for pre-existing European patents (see further below). In particular,
it allows holders of European patents applied for or granted before
the UPC is created to opt-out of the jurisdiction of the UPC.
39. Articles 58a-60 set out the requirements
for the entry into force of the agreement.
Key Articles of the Agreement
SEPARATION OF INFRINGEMENT AND VALIDITY—BIFURCATION
40. Article 15 provides that if in a claim for
infringement a defendant raises a counterclaim that the patent
is invalid, the local and regional divisions have a discretion
to either:
- hear both claims together;
or
- hear the infringement claim and refer the validity
claim to the Central Division; or
- suspend the infringement claim and refer the
validity claim to the Central Division; or refer both claims to
the Central Division (if both parties agree).
41. Infringement cases may be brought in a local
or regional division provided that Member State or region is where:
- the alleged infringement occurred;
or
- the defendant resides or carries out business.
42. If there is no appropriate local or regional
division, infringement cases can be brought in the Central Division.
43. Validity claims must be brought in the Central
Division. However, if the patent concerned is already the subject
of infringement proceedings in a local or regional division, then
the validity claim must be brought in the same local or regional
division.
COSTS
44. Article 18 provides that the UPC will be
funded by contracting States during the transition period. Afterwards,
it will be self-financing; court fees shall consist of a fixed
fee and a value-based fee above a certain threshold which is yet
to be defined.
45. By virtue of Article 19 contracting States
which host central, regional or local divisions will be responsible
for providing the necessary facilities; contracting States' contributions
to the UPC are yet to be defined.
LANGUAGES
46. Article 19 obliges local divisions to use
the language of that contracting State and regional divisions
to use the language designated by the States sharing it. If both
parties agree, or the panel of judges so decides, the language
of proceedings can be changed to that of the patent.
47. The Central Division will use the language
of the patent (English, French or German).
JUDGES
48. Article 10 provides that judges of the UPC
"shall ensure the highest standards of competence and proven
experience in the field of patent litigation." Technically
qualified judges must have expertise in both patent litigation
and the relevant area of technology.
49. Article 14 states that a framework for the
continuous training of judges will be established.
50. Article 6 concerns judges of the court of
first instance. No panel may have three judges with the same nationality.
For local divisions with little experience, panels must have one
judge from the hosting Member State and two with different nationalities.
The remaining local divisions must have panels with two judges
from the hosting Member State and one with a different nationality.
Any party or panel may request that an additional technically
qualified judge is allocated to the panel.
51. Panels of the Central Division must have
one judge with qualifications in the area of the technology concerned.
52. Article 7 concerns the court of appeal. Panels
must have five judges. Three judges must be both legally qualified
and of different nationalities. Two judges must have technical
qualifications in the area of technology concerned.
EXCLUSIVITY AND TRANSITIONAL PROVISIONS
53. Article 15 gives the UPC exclusive competence
for European patents and unitary patents.
54. By virtue of Article 58 the transition period
for the UPC will be seven years. During this period, proceedings
concerning (non-unitary) European patents may still be initiated
before national courts. Existing holders of European patents and
those applying for European patents may also opt in or out of
the exclusive competence of the UPC during this period.
55. A review of the UPC will be carried out five
years after the UPC Agreement comes into force. Following this
review, the transition period may be extended by up to another
seven years.
The Statute of the UPC
56. The draft Statute outlines the institutional
and financial arrangements for the UPC. Articles 2-9a set out
the requirements for judges, including the eligibility criteria,
their appointment and how they should serve in office. Articles
10-12a outline the arrangements for governing the new court system.
Articles 13-15 set out how the Court of First Instance should
function including the composition of panels. Article 16 sets
out the requirements for the composition of panels of the Court
of Appeal. Articles 17-20 define the functions of the Registrar.
Articles 22-32 present the financial arrangements for the UPC.
This includes the framework for adopting the budget each year.
Articles 33-37 deal with the process of reaching decisions within
the UPC and how dissenting opinions with be dealt with. Annex
II to the Statute lists the topics to be included within the Rules
of Procedure.
10 The Committee lifted the scrutiny reserve on the
draft Regulation, under paragraph 3(b) of the scrutiny reserve
resolution, in order for the Minister to be able to agree to the
general approach. Back
11
The text of the Regulation and the proposed revisions can be found
on the Council's website in the form of a limité document
which has been made public: http://register.consilium.europa.eu/pdf/en/11/st17/st17578.en11.pdf
("Proposal for a Regulation of the European Parliament and
of the Council implementing enhanced cooperation in the area of
the creation of unitary patent protection - Analysis of the final
compromise text"). Back
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