10 Unified Patent Court
| Committee's assessment
| Legally and politically important |
| Committee's decision | Cleared from scrutiny (decision report on 30 January 2013); drawn to the attention of the Business, Innovation and Skills Committee
|
| Document details | Draft Agreement on a Unified Patent Court and draft Statute
|
| Legal base | —
|
| Department
Document numbers
| Business, Innovation and Skills
(33058), 11533/11, —
|
Summary and Committee's conclusions
10.1 The Unified Patent Court (UPC) is part of a
package of measures designed to establish and enforce a unitary
patent. It will offer the opportunity to obtain patent protection
for new inventions across participating States from a single application,
administered by one organisation. EU Regulations (implemented
under enhanced co-operation) covering languages and establishing
the concept of a unitary patent are also part of the package.
10.2 Currently a company or individual seeking patent
protection across Europe must register their patent in each individual
state where it is to take effect (if granted centrally by the
European Patent Office (EPO), these are known as "bundle
patents"). They are also required to pursue any legal action
to enforce the rights provided by the patent in the national courts
of each State where the alleged infringement took place. A unitary
patent (or "European patent with unitary effect") by
contrast will need to be registered just once (with the EPO) and
is intended to confer simultaneous and homogeneous legal protection
in all States who have signed up to the agreement.
10.3 The UPC Agreement sets up a court common to
the participating States as part of their judicial system and
will eventually have exclusive jurisdiction concerning the infringement
and validity of both European bundle patents (currently granted
by the European Patent Office (EPO) according to the European
Patent Convention (EPC)) and European patents with unitary effect.
10.4 The UPC will be comprised of a Court of First
Instance, consisting of a central division and local or regional
divisions, hosted by member states or groups of Member States,
and a Court of Appeal to be sited in Luxembourg.
10.5 When we cleared the Agreement for the Patent
Court we asked the then Minister to provide a further update on
the Rules of Procedure then under negotiation summarising their
content, explaining the extent to which they mitigate previously
expressed concerns (over the effect of bifurcation[50]
on forum shopping, the training and quality of UPC judges, and
the cost of using the UPC) and the extent to which they reflect
the views of stakeholders.
10.6 The Minister for Intellectual Property (Baroness
Neville-Rolfe) now provides an update, the details of which are
set out below, directs the Committee to the Government's Impact
Assessments on the secondary legislation that is needed to implement
the UPC Agreement, and reports on progress in finding a London
location.[51]
10.7 We are grateful for the further update on
the progress of negotiations on the Rules of Procedure for the
Unified Patent Court. These appear to be progressing in a manner
which helps to alleviate the concerns we previously raised. We
should be grateful for a further update, particularly when there
has been substantive progress on the issue of fees.
10.8 We draw these developments to the attention
of the Business, Innovation and Skills Committee together with
the Government's Impact Assessments which analyse the costs and
benefits of the unified patent regime.
Full details of the documents:
Draft Agreement on a Unified Patent Court and draft Statute: (33058),
11533/11, —.
The Minister's letter of 10 February 2015
10.9 The Minister indicates that following the signing
of the UPC Agreement on 19 February 2013 the Government has been
actively engaged in the negotiation of its Rules of Procedure
in the forum of a "Preparatory Committee" which itself
has consulted stakeholders and taken their views into account.
She then sets out progress on alleviating the risk of bifurcation/the
injunction gap, and costs:
"Most significantly, we have been able to
secure a change designed to bring the two parts of a bifurcated
case closer together in time so that the decisions coincide. This
new rule requires the Central Division to accelerate a case for
revocation so that the timing of its decision can coincide more
closely with that of the parallel infringement action on the same
patent being heard in a local or regional division. This change,
which has been welcomed by UK stakeholders, will significantly
reduce the risk of a so-called 'injunction gap' as it makes it
less likely for a decision on granting an injunction to be made
prior to a decision on the validity of a patent. This change should
also reduce the incentive for forum shopping which I know was
a key concern for the European Scrutiny Committee.
"Alongside the Rules of Procedure there
are also rules relating to court fees. These will be finalised
later in the year after a Preparatory Committee consultation on
court fees this spring. The consultation, which also considers
the impact of fees on SMEs, will present a proposed schedule of
fees and added detail for the court fees rules. It is therefore
expected that the final schedule of court fees will be agreed
in the autumn. Rules on legal aid and mediation and arbitration
have also been developed and I expect these to be agreed around
the end of 2015."
10.10 On the question of the costs and benefits of
the unified patent regime she indicates:
"The Committee's report also commented on
the European Commission's Impact Assessment of the unitary patent
Regulations; this will not be revisited. However, as part of a
recent Technical Review and Call for evidence on domestic implementing
legislation the Government has prepared Impact Assessments considering
the effects of the legislation in the UK. These Impact Assessments
are available on the Gov.UK website.
"You may also be interested to know that
my officials are also making progress on finding a London location
for the UPC. A number of different options are being considered
at present and a decision on the location will be announced in
due course."
Previous Committee Reports
Thirtieth Report HC 86-xxx (2012-13), chapter 8 (30
January 2013); Forty-sixth Report HC 428-xli (2010-12), chapter
2 (9 November 2011); Forty-eighth Report HC 428-xliii (2010-12),
chapter 5 (7 December 2011); Fiftieth Report HC 428-xlv (2010-12),
chapter 2 (20 December 2011); HC 1799 The Unified Patent Court:
help or hindrance?
50 "Bifurcation" describes the situation
where in respect of the same patent there is an action for breach
of the patent (in a local Division of the UPC) and a separate
action challenging the validity of the patent (in the Central
Division). This is also known as an "injunction gap"
because of the risk of an injunction preventing an alleged infringement
of a patent being granted before a separate decision on the validity
of the patent. Back
51
London will be hosting a branch of the Central Division dealing
with pharmaceutical, human necessities and life science patents. Back
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