EU Unified Patent Court

According to reports published on 11 June 2017, the German Federal Constitutional Court has requested the Federal President of Germany to refrain from signing the law that is necessary to ratify the Agreement on a Unified Patent Court (UPC). The president has agreed to comply with this request. The president’s signing is the last step required for a law to come into force after it has already passed both legislative chambers in Germany.

Reasons for the Request

The German Federal Constitutional Court has based its request on account of two challenges to the law ratifying the UPC, namely a constitutional complaint and a parallel request for expedited proceedings filed by the same complainant. The decision to ask the president to postpone the signing, indicates that the Federal Constitutional Court might not view the challenges as outright unsuccessful. The Court has not yet announced a date when its decisions will be issued.

Background

The reasons brought forward in both challenges are unknown. Reports suggest that the challenges are based on concerns that the contemplated proceedings before the UPC might not comply with due process of law. Some voices claim that the decisions of the opposition division of the European Patent Office (EPO) would not be subject to review by state courts, and that the boards of appeal of the EPO would not be sufficiently independent from the administration of the EPO.

A Look Ahead

It is unlikely that the president will sign the law before a decision of the Federal Constitutional Court will have been handed down. Accordingly, the ratification of the UPC in Germany will likely be postponed to an unknown date.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

German Reichstag in Berlin, GermanyThe future of the European Unified Patent Court (UPC) appears to look a bit clearer following recent ratification activities. On 16 January 2017, the Preparatory Committee for the UPC announced on its website that it is working under the assumption that the UPC can become operational in December 2017. However, the Committee stated that this timeline is conditional on a number of factors, with the most important being “the necessary ratifications of the [UPC Agreement] and accession to the Protocol on Provisional Application”. So far, twelve EU Member States have ratified the UPC Agreement, including France (14 March 2014) and Italy (10 February 2017).

The three countries with the highest number of patent applications in Europe (France, Germany and the UK) are mandatory ratifying countries of the UPC Agreement.

On 10 March 2017, the German Parliament, Bundestag, approved ratification of the UPC Agreement and related amendments to the German Patent Act. As a next step in the legislative process, the German Federal Council, Bundesrat, will need to approve the draft legislation. After approval by the Bundesrat, the resulting laws would then need to be signed by the newly elected Federal President Frank-Walter Steinmeier. The laws would take effect on the day following promulgation in the German Federal Law Gazette.

On 28 November 2016, the UK government issued a press release that, despite the UK’s planned leave from the EU, commonly known as “Brexit,” it still plans to ratify the UPC Agreement over the coming months. However, it is not clear how the ratification of the UPC agreement will play out with the UK’s heralded rejection of the supremacy of EU law and the jurisdiction of the Court of Justice of the European Union (CJEU). The UK government’s White Paper on exiting the EU specifies that “[the UK] will bring an end to the jurisdiction of the CJEU in the UK.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

BrexitOn 28 November 2016, the UK government issued a press release that, despite the UK’s leave from the EU, commonly known as “Brexit,” it still plans to ratify the Agreement on a Unified Patent Court (“UPC Agreement”) over the coming months. The UPC Agreement was signed by 24 out of 25 EU Member States that participate in the enhanced cooperation procedure to create a unitary patent system in the EU, including the UK.

The UK Minister of State for Intellectual Property, Baroness Neville Rolfe, said that for as long as the UK was a Member State of the EU, “the UK will continue to play a full and active role.” She added that the (long-developed) new patent system “will provide an option for businesses that need to protect their inventions across Europe.”

At present, patent protection in Europe can either be obtained through national patents, issued by the respective national offices, or European patents, granted by the European Patent Office. However, the granted European patent is only a “bundle” of individual national patents. Pursuant to article 64(3) of the European Patent Convention, any infringement of a European patent shall be dealt with by national law. Thus, despite the name European patent, there is no unitary property right with effect for all member states and no unitary judicial protection. Judicial relief can only be obtained on a national level and only applies to the territory of each respective member state.

Under the new unitary patent system, it will be possible for businesses to protect and enforce their patent rights across Europe with a single pan-European patent right and through a single unified patent court. The central division of the UPC will have its seat in Paris, with London (life sciences) and Munich (mechanical engineering) each hosting specialist seats.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

European Patent OfficeOn 16 February 2016, the German Federal Ministry of Justice and Consumer Protection published the first draft of legislation that will make it possible for Germany to ratify the UPC Agreement. The draft law granting consent for ratification was published together with accompanying draft legislation to implement the unitary patent system into German law. The accompanying law proposal in particular contains changes to German patent and civil procedure law to accommodate the unitary patent. It, among other things, also addresses the delegation of German judges to the UPC.

After a period of consultation, it is anticipated that final draft laws will be introduced into the German parliament before the summer of 2016. These will then pass through the legislative process in parliament for debate, any amendments, and then a final vote—probably in autumn.

Dr. Ulrich Worm and Benjamin Beck, a partner and a research assistant, respectively, in the Intellectual Property practice group of Mayer Brown, analyzed the current state of ratification of the Unified Patent Court Agreement in Germany in a recent article published in World Intellectual Property Review (WIPR). To read their article, Oktoberfest for the UPC?, click here.