From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 18 September 2013

More on the Unitary Patent - Two Misconceptions and One Uncertainty

This Kat received a welcome email in response to last week's report of the AIPPI event on the Unitary Patent and Unified Patent Court. The questions asked were of a general nature, and therefore your humble servant thought that it might be worth a quick blog post to expand on three issues raised in his presentation.

The issues are two misconceptions (mentioned on the first of this Kat's slides which you can access at the previous link - his slides are the last set of the three) and one point of uncertainty (mentioned on the fourth slide from the end "Double Protection?")

Misconception 1 - the unitary patent system will become mandatory

There is no provision in the current legislation to make the unitary patent mandatory. The existing "classical" European patent will continue to be available, and national patents will continue to be available. The Unified Patent Court however will eventually have exclusive jurisdiction over all European patents whether unitary or classical, after the end of the transitional period (initially 7 years, during which national courts will also have jurisdiction over classical European patents).  This will initially be subject to the possibility of opt-out (which can be done in relation to any classical European patent or application during the transitional period), but the exclusive competence will be universal when the last of the opted-out patents has expired.  [The previous sentence represents the majority view of Article 83(3) of the UPC Agreement].  The Unified Patent Court will never have jurisdiction over national patents.

Misconception 2 - The Unitary Patent acts as a designation of the European patent application

There was an earlier proposal for the unitary patent to feature as a designation of a European patent application, but this does not feature in the current legislation. Instead, the designations of the European patent for the countries which are members of the unitary patent system at grant (ie those which are participating in the enhanced cooperation of the Unitary Patent Regulation and which have ratified the UPC Agreement), are "traded in" for, or converted into, a unitary patent with the corresponding geographical coverage (within one month of grant - Recital 18 of the Regulation)

This is clear from Article 3(1) of the Regulation:

A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection.

in combination with Article 4(1):

A European patent with unitary effect shall take effect in the participating Member States on the date of publication by the EPO of the mention of the grant of the European patent in the European Patent Bulletin.
[Merpel has had a further thought which she will now hurt her readers' heads.  The system will come into force when 13 countries including UK, France and Germany ratify the UPC agreement.  So initially the territorial scope of the unitary patent will likely be 13 countries.  But, say, 5 years later, more countries will likely have ratified the UPC agreement. If a European patent designating all states is granted in the early days and goes unitary for the 13 available countries and is then validated in all the others, the UPC will for the first 7 years have exclusive jurisdiction over the unitary part and non-exclusive jurisdiction in respect of countries which ratify the UPC later. In respect of those countries, can the patent proprietor chose between national courts and the UPC?  Can he restrict the territorial extent of a UPC action in order to also have a national action in a country outside the scope of his unitary patent but within the (non-exclusive) jurisdiction of the UPC?  Answers in comments below please!]

An Uncertainty

Article 4(2) of the Regulation requires participating member states to take measures to remove the national effect of a designation of a European patent, when that designation has been replaced by a unitary patent:

The participating Member States shall take the necessary measures to ensure that, where the unitary effect of a European patent has been registered and extends to their territory, that European patent is deemed not to have taken effect as a national patent in their territory on the date of publication of the mention of the grant in the European Patent Bulletin.

This Kat previously raised the question of whether the UPC-related provisions in the Intellectual Property Bill gave the power to take the required measures according to Art 4(2).  Justin Watts correctly pointed out (see second comment) that, as a piece of EU legislation, the Regulation requires no primary national legislation for its implementation: the requisite power is already contained in section 2 of the European Communities Act 1972. Therefore, the government can change the Patents Act by secondary legislation in order to remove the EP(UK) effect of a European patent for which unitary effect has been registered.

Now, Section 73(2) of the Patents Act provides that, if a UK patent and an EP(UK) with the same effective date are granted to the same person for the same invention, then the UK patent is revoked by the Comptroller.  Other countries have similar prohibitions on double patenting as between a national patent and a European patent.

In last week's AIPPI presentation, this Kat queried whether implementation of Art 4(2) of the Regulation would necessarily involve an analogous prohibition of double protection as between a national patent and a unitary patent.  He wondered whether national governments might be persuadable not to prohibit such double protection, as  it might provide an attractive way to invite users into the system early on, because for important cases they could file a European patent that they intended to make unitary, and then precautionary national patent applications as insurance in important jurisdictions. This is still possible even with the prohibition on double patenting, of course, but things get tricky to try to avoid overlapping claim scope to forestall revocation of the UK national patent.

Actually it seems unlikely at least as far as the UK is concerned that double protection as between a national patent and a unitary patent will be permitted, but it still seems possible in theory to this Kat. We will have to wait until the secondary legislation to implement the UPC and the unitary patent is drafted to see whether, either intentionally or inadvertently, the prohibition on overlap between unitary patents and national patents is the same as, or different from, that currently relating to classical European patents.

9 comments:

Anonymous said...

Darren, two small comments:

1. "Other countries have similar prohibitions on double patenting as between a national patent and a European patent." - true, but just to be accurate there are others that do not. Denmark, for instance, allows parallel protection and this is an important point because national Danish protection extends to Faroes and Greenland whereas EU(DK) does not. If double patenting were not allowed then it would be impossible to maintain protection in Greenland while pursuing a UPC-compatible protection.

2. I'd like to understand the basis for UPC jurisdiction especially under a unitary patent over the Isle of Man, given that it is not part of the EU but that PA77 extends there and there are apparently no plans to change the jurisdictional extent. How does that work?

Anonymous said...

It SHOULD be mandatory after a certain time.

Anonymous said...

I believe it was the case pre-London Agreement (when Section 77(6) still had effect) that failure to comply with 77(6) meant that your EP(UK) was always void but did not prevent 73(2) from applying because the EP(UK) had still granted. That is if you failed to validate an EP designating UK, rather than positively withdraw the GB designation before grant, the corresponding UK patent would still be revoked.

By the same logic "deemed not to have taken effect as a national patent" does not necessarily mean that it is deemed not to have granted. At face value an EP that grants designating the UK will result in 73(2) kicking in and the UK subsequently being revoked, and whether unitary effect is later registered in the Register for unitary patent protection should not make any difference.

Anonymous said...

Re Wednesday, 18 September 2013 15:25, point 2.

Good spot there.

Watch this space for international companies setting up their European supply, distribution and release hubs in the Isle of Man.

It happened with Malta (as duly aided and abbetted by the Maltese Government which encouraged this a number of years ago), and once that loophole closes (i.e. companies will cease to forget about Malta when deciding on European patent coverage) then companies will be looking for other options.

Anonymous said...

I am not sure that the comment 19/9/2013 14:49 and my original comment on the Isle of Man are addressing the same issue. It seems to me clear that the UK legislature is not for one moment INTENDING to create a Manx lacuna and the legislation will purport to cover Manx infringement. The issue I was questioning was how that works in practice? I would be very wary, as an investor, about any assumption that there will in fact be a hole. Plus, it will take a long time to find out one way or another given that the decision will end up with the ECJ (so that's 10 years down the drain) and meantime I would not rule out a Manx interim protective order and/or parallel precautionary proceedings in the Manx courts paralleling any UPC decision. As a business, I would not be risking an investment in Man based on any assumption that it would be patent-free, because there will be no certainty for a long time and the end result will very probably go against me. But that doesn't alter my interest in understanding what the basis for that protection is going to be.

Anonymous said...

This Article 4(2) might cause problems with regard to registering EP(UK) patents in Gibraltar. If as a result of registration, the UK part does not exist, how do you register your rights in Gib.?

Anonymous said...

Interesting comments re. the Isle of Man. As far as I can see:
1) their will be no unitary protection, as the regulations can not be applied
2) the UPC will apply in the Isle of Man as it the territorial scope the UPC is that of the European patent is the scope as defined in the European Patent Convention (note however: the UPC is careful not to define the territorial scope of the unitary patent!)
3) the same will hold for Curacao, Sint Maarten and the Caribbean Netherlands with regards to ratification of the Netherlands
===
So if no unitary protection is chosen, things are clear and the Isle of Man is in, but if unitary protection is effected, then
a) the EP (UK) or EP (NL) patent should not effect
b) as this requirement stems from the regulation (not the UPC agreement) it does not apply to the Isle of Man
c) the UK therefore would be free to grant a EP (UK) patent of the Isle of Man (or at least not regard it not having taken effect there)
d) [and this is pure speculation!] in view of the small size of the jurisdiction and in conformation with the spirit of the unitary patent, the UK could also make law deeming a EP (UK) patent to be automatically granted for free upon the registration of a unitary patent. That would at least give rise to full protection there; and a uniform regime with regards to revocation (however licensing of a unitary patent is not a license for the isle of man etc…)

Roufousse T. Fairfly said...

Applicant files EP application A1.

A1 is "divided" into A2 in due time.

A1 proceeds to grant, and applicant elects the community patent.

A2 eventually proceeds to grant with the same claims as A1 (or at best, with a token difference). Applicant chooses the classical EP bundle of patents (each of which being equivalent to a national patent). Since each application is independent, and the CP wouldn't be implemented in the form of a designation decided at the outset, it should be possible to choose a different path for either application.

There are no real impediment to double patenting before the EPO, and in most EP states either.

The possibilities are somewhat frightening, isn't it?

Anonymous said...

An interesting aspect of the unclear status of British Overseas Territories with respect to patent legislation regards international patent applications: according to Art. 9(1) PCT, "any resident or national of a Contracting State may file an international application." Now, individual citizens of BOTs are British nationals. However, companies incorporated in BOTs are not resident in the UK, and, AFAIK, there are no BOTs among the PCT Contracting States. Therefore, at least in principle, such offshore companies should not be able to apply for international patent applications on their own (although I guess the problem is usually circumvented by designating the inventors as applicants for the US)...

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