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.

Sunday, 16 February 2014

The problem of mixed European patents at the UPC - the Italian and late ratification conundrums

When this Kat is not Katting, he sometimes stalks other blogs.  For these purposes, he sometimes assumes the persona of his personal blog, the IP Alchemist (which is where he blogs about random things from chemophobia and music, to posting holiday snaps so his mother can check what he has been up to.)

Anyway, during the week when his fellow Kats were covering breaking news from the Court of Justice, this Kat was lurking as the IPAlchemist in the comments section of the IPCopy blog, which has been posting excellent material about many of the issues currently concerning this moggy, including the patent attorney examination system, the Intellectual Property Bill, and the Unitary Patent and Unified Patent Court (UPC).

So many questions...
IPCopy was considering a point that has previously been concerning this Kat, and so he would like to set out his thoughts in the hope that our dear readers may have some answers.

Article 2 of the UPC Agreement defines the patents that can exist under the UPC scheme as follows:
(e) ‘European patent’ means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/2012.
(f) ‘European patent with unitary effect’ means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012.
(g) ‘Patent’ means a European patent and/or a European patent with unitary effect.
It is thus envisaged by the legislative scheme that a European patent will either be a Unitary Patent OR a European Patent (that does not benefit from unitary effect – which I shall call “classical”).

However, it seems that actually there will be a substantial number of what I shall call “mixed patents”, that is, patents which are unitary for some countries (namely those which had ratified the UPC agreement at the time of the grant of the patent when unitary effect was requested), and classical for other countries.

There are three types of such “other countries”.  The first, which need not concern us here, is states that have not signed the UPC agreement at all, such as Switzerland, Spain and Turkey.  The classical European patent can subsist in those countries without difficulty, because there is no overlap with the UPC scheme.

The other two types do concern us.  The second type, which currently looks as though it will be only Italy, is a country that does not participate in the Unitary Patent at all, but which does sign and ratify the UPC Agreement in order to be part of the Unified Patent Court system.  (It is perfectly permissible to be part of the UPC Agreement but not the Unitary Patent; the converse is not however possible as it is mandatory to be part of the UPC scheme in order to use the Unitary patent system.)  This is the source of the “Italian Job” problem discussed by the IPCopy here.

The third type, which I tried to explain in my comment on that post, is countries that ratified the UPC agreement AFTER grant of the European patent concerned, when unitary effect is registered.  For such countries, Article 18(2) of the Unitary Patent Regulation provides:
By way of derogation from Articles 3(1), 3(2) and 4(1), a European patent for which unitary effect is registered in the Register for unitary patent protection shall have unitary effect only in those participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration.
So the European patent cannot be Unitary in respect of such countries, but the proprietor can validate nationally in the usual manner.  Let us suppose that the proprietor actually registers Unitary effect in the available countries and validates nationally everywhere else.

But suppose now 5 years later it comes to litigate that patent.  In the intervening period, some of the countries that had not ratified the UPC agreement at grant now HAVE ratified it, so the Unified Patents Court is competent with respect to those countries.  Since the Unitary Patent system requires only 13 ratifications to come into force, far fewer than the number of signatory countries (24 if you don’t count Poland), it seems plausible that at least over the initial period there will be a real issue with the status of the patent in these late ratifying countries.

At the time of litigation, the patent has three portions:
1) The Unitary part
2) The UPC competent classical part, which consists of national validations of the European patent over which the UPC now has jurisdiction because the countries concerned have subsequently ratified, plus Italy (the second and third types of country discussed above)
3) The non-UPC part (Spain, Turkey, Switzerland, etc.)
Again, the non-UPC part does not concern us here.  The question that does concern this Kat is, to what extent can a case at the UPC be limited to the Unitary-only patent, preserving (during the transitional period) the competence of a national court for what I called “a UPC competent classical part” in 2) above?  This matters in at least two situations:

A) Can a proprietor restrict an infringement action at the UPC to the unitary part only, and launch national actions in other countries (eg in Italy) under Art 83(1) of the UPC (“During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.”)?  Is the answer different depending on whether the national action is brought before, or after, the UPC action?

B) If the UPC decides to revoke such a patent, does the revocation have effect for the Unitary part only, or also for the UPC competent classical part?  This is not acte claire because Article 34 of the UPC Agreement, which purportedly deals with this issue, refers to European patents, which are defined as those which do not benefit from Unitary effect:
Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.
There thus appears to be a legislative lacuna in relation to mixed European patents.

It is clear to this Kat that such a mixed patent cannot be opted out of the UPC, because opt-out is only available for European patents which do not benefit from Unitary effect.  So the UPC will always have at least shared competence with national courts over the "UPC competent classical part".

A further legislative lacuna pointed out in the comments of the IPCopy post is what happens if a patent proprietor tries to request Unitary effect for a patent that is opted out already (a scenario that is perfectly possible because opt-out can be requested in respect of a pending application.)  I put forward the view that the request for Unitary effect should be inadmissible, because an opted-out patent is not eligible subject matter for a request for Unitary effect.  One can think of some fudges and get-arounds, but I still think this the most likely outcome.  Feel free to disagree however, preferably with legal basis.

Finally, a kind commenter Antonio Pizzoli posted a link to this document, Draft Rules relating to Unitary Patent Protection, which is a draft of the rules relating to that portion of the Unitary patent system that is delegated to the European Patent Office.  This is not new – it is dated August 2013 – but it does not seem to have been widely circulated and this Kat had not seen it before.  Its key provisions are discussed by IPCopy here.

Several Kats, and not a few humans, are engaged in the task of trying to envisage how these areas of uncertainty will be resolved.  This is a collaborative task, so your comments, thoughts and opinions are greatly welcomed.

In final Unitary patent related news, this Kat has heard that Malta ratified the UPC agreement on 21 January 2014 and that France has passed the law that will enable ratification.  On the other hand, this Kat is hearing ever more distant estimates of when the UPC will become a reality - 2017 anyone? - does any reader have a substantiated estimate?


Anonymous said...

Is it clear/generally agreed that you can't simultaneously have a unitary patent and a classical patent? It wouldn't seem unreasonable to me to take "(e) ‘European patent’ means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/2012" to mean just a national part (e.g. the EP(UK) part), rather than the entire classical patent "bundle", in which case the wording of Article 2 you've quoted wouldn't imply you can only have one or the other.

Mark Richardson said...

Thanks for the interesting post Darren.

So, these mixed European patents may be within the competency of the UPC, may fall outside or may have some sort of shared competency?

Perhaps we could call them "Schrödinger's pats"?

The UPC timescale does seem to be slipping. It seems, as you say, that France will happen fairly soon. The UK appears to be on track to ratify next year if I understand things. The only one of the "required 3" that I've not heard much about is Germany.

Anonymous said...

Rumours fly around that Germany is having second thoughts. I doubt them.

Darren Smyth said...

To the first anonymous - I have been scratching my head about your question, which I don't fully understand. It is certainly clear that at the steady state, when all countries that are going to ratify have done so, that, in respect of the participating countries, a European patent is either Unitary (in which case it is a single indivisible right covering all countries) or Classical (the current bundle). This is clear, for example, from Article 3 of the Unitary Patent Regulation, and the UPC Agreement cannot be in conflict with this. At least in the Regulation I think it is clear that European Patent with Unitary Effect means the whole of it, not some hypothetical national part. And Article 4(2) of the Regulation I think makes it clear that a European patent can be Unitary or Classical but not both (in respect of participating member states). If this does not answer your question, please could you restate your proposed interpretation of "European Patent".

Anonymous said...

Things are not that difficult: if you look at the UPCA provision (Article 32) on competence for deciding on infringement and validity, it is clear that it relates to patents. Patents is the word used for both unitary patents and bundle patents. So, in case of a mixed patent, based on Article 32 UPCA, the UPC decides on validity and infringement for both the unitary patent (for the states where the unitary patent applies) and the bundle patent (for teh other UPC states). All what Article 34 does, is saying that as regards the bundle patent, the UPC decision has effect in the UPC states for which the bundle patent has effect (so not in the states where the bundle patent was not validated or has lapsed). In sum, no problem, people just focussed on Article 34 without looking at Article 32.

Darren Smyth said...

To anon at 21:43

I do not think that you have understood what the issue raised in the blog is. It is certainly not that people have focussed on Art 34 at the expense of Art 32. It is that if the same patent can be both a "European patent" and a "European Patent with Unitary Effect" (as you seem to assume, probably correctly, but not beyond any possible doubt in my view), then can Art 83(1) apply or not? In other words, can a national court have any competence, or is the competence of the national court entirely excluded? You may think that the answer is clear, and I guess you think that Art 83(1) is excluded. This may also be correct, but again I don't think it is beyond any possible doubt.

Anonymous said...

First anonymous here again - my question may have been unclear, but nevertheless you answered it perfectly Darren (and I agree with what you've said) - thanks!

Proof of the pudding said...

Darren: I have an off-the-wall question for you. Can a "unitary" European Patent have unitary effect in a "Participating Member State" (PMS) that has not ratified the UPCA?

I had always presumed that the answer is a clear "no". However, the rather loose wording used in Reg. 1257/2012 has given me pause for thought. Let me explain why.

Art. 2(a) of Reg. 1257/2012 defines a "PMS" essentially as an EU MS that participates in Enhanced Cooperation under Decision 2011/167/EU (or subsequent decision) in connection with unitary patents. That definition of PMSs clearly includes countries that have not ratified the UPCA.

So this begs the question of whether Reg. 1257/2012 limits the unitary effect of an EPUE to only certain PMSs.

Art. 5(2) is one example of a provision of Reg. 1257/2012 that refers to PMSs in which an EPUE has unitary effect. This of course implies that there can be PMSs in which the EPUE does not have unitary effect... a concept that is confirmed by the 2nd paragraph of Art. 18(2).

However, what is meant in Art. 18(2) by "participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect"? The UPCA does not talk about "exclusive jurisdiction", but rather "exclusive competence". Further, the "exclusive competence", as defined in Art. 32 UPCA does not have any geographical limits. (The opposite is true for the territorial scope of the decisions of the UPC, as defined by Art. 34 UPCA... but the question of where a decision has effect is completely separate from the question of where a patent has effect.)

Of course, this is where Art. 17(2) or Art. 18(5) of Reg. 1257/2012 could help. Those provisions require PMSs to update the Commission with progress made in updating national laws to ensure no "double" (unitary / national) protection. That is, those countries that do not notify the Commission under Art. 17(2) or 18(5) might be deemed to be PMSs in which there can be no unitary effect.

However, it seems absurd to interpret the territorial effect of an EU Regulation (which, of course, has direct effect regardless of national implementation) by reference to actions taken, or not taken, under national law.

Indeed, if ratification of the UPCA were a prerequisite to an EPUE having unitary effect in a PMS, then why does Reg. 1257/2012 not explicitly say so? After all, ratification progress is mentioned in Art. 18(3)... but with no apparent connection to Art. 18(2).

Also, what are we to make of the mis-match between "exclusive jurisdiction" in Reg. 1257/2012 and "exclusive competence" in the UPCA (bearing in mind the small areas of retained competence of the national courts, as well as the shared competence during the transitional period)?

If we can answer all of the above points, then I suspect that the answer to your original question will also emerge. Indeed, there will likely be a way found for the UPC and national courts to clearly distinguish between EPC Contracting States that are "ratified" PMSs, "non-ratified" PMSs, non-PMS EU MSs and non-EU MSs. But whether that distinction will survive Brexit is another question entirely...

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