International Patent News

The UPC Preparatory Committee agrees on recruitment package, 15 April 2016

Yesterday, the recruitment package was agreed by the UPC Preparatory Committee at its 15th Preparatory Committee Meeting. The judicial recruitment will start in May. The report of the 15th Preparatory Committee Meeting can be found here.

Opting out European Patents from the jurisdiction of the UPC, 28 March 2016

According to the UPC Agreement, the UPC will not only have jurisdiction over Unitary Pa-tents, but also over existing "classical" European patents. Therefore, Article 83(3) of the UPC Agreement grants patentees the possibility to opt-out their European Patents during the transi-tional period of seven years.

The procedure of opting-out an European Patent is regulated in Rule 5 of the Preliminary set of provisions for the Rules of Procedure of the Unified Patent Court. To opt out an European Patent, it is required to submit an Opt-out Application via the UPC Case Management and eFiling System. Currently, this system is still under development. The beta test site can be ac-cessed by registered users. In the second week of March 2016 the updates of the system re-leased include a "basket" for lodging multiple opt-out applications at once.

The Rules of Procedure only allow the patent proprietor or an authorised representative to opt out a patent. But practically, anyone can opt out any patents by using the UPC Case Manage-ment. Every user will be able to access the ‘applications’ menu, after logging into the Case Management System using the individual username and password. After that, the user only need to enter the number of the European Patent and confirm that he or she has the authority to opt this patent out of the UPC.

All opt out requests will appear on the Register which will be published on the UPC website. The Register will be updated within minutes of a completed opt out application. The opt-out will be effective from the date of entry in the Register.

Previous to the Committee meeting on 24-25 February 2016, in which the rules on Court fees and recoverable costs were agreed, the UPC Committee proposed that a fee of €80 should be paid for opting out and back in of every European Patent. After the meeting the Committee announced that there will be no fees charged for either requesting an opt-out or withdrawing an opt-out request.

For further information see the FAQs on the UPC website.

Agreement reached on Court fees of the UPC, 26 February 2016

At the 14th UPC Preparatory Committee Meeting, which took place on the 24-25 February 2016, the Committee agreed the Rules on Court fees and recoverable costs for the UPC. The Rules, alongside an Explanatory Note, and also Guidelines for determining value-based fees are now published on the UPC website. The report of the 14th Preparatory Committee Meeting can be found here.

Confirmed locations of the UPC, 04 February 2016

A number of UPC divisions have now confirmed their locations.

These are:

  • the Court of Appeal in Luxembourg
  • central and local divisions in Germany
  • the Nordic-Baltic regional division based in Stockholm

Addresses and photos of the locations can be found on the UPC website.

Unitary patent distribution key agreed, 17 November 2015

The EPO Select Committee adopted the distribution key, which apportions the 50% share of the Unitary patent renewal fees amongst the participating EU Member States, whereas the other half of which is to be retained by the EPO.

During the initial period of operation, the 50% of the fees (minus an adminis-trative charge) will be distributed in accordance with an allocation formula that regards the gross domestic product and the number of applications filed from each participating Member State.

18th version of the Rules of Procedure published, 19 October 2015

Both the Legal Working Group and the Drafting Committees of the Preparato-ry Committee have scrutinized the agreed text, which has acknowledged the comments of participants in the written procedure and oral hearing stages of the process. The preparatory committee has now published the latest version of Rules of Procedures on its website.                  

UPC Provisional Application Protocol signed, 1 October 2015

On 1 October the Protocol to the Agreement on a Unified Patent Court on provisional application has been signed by representatives of the member states.

The essential contents of the Protocol are the possibility to apply some parts of the UPC Agreement at an earlier stage, enabling final preparations for the Court to be made (in particular the recruitment of judges) and early registration of opt-outs. According to its announcement, the Preparatory Committee pre-dicted, that its work will be completed by June 2016 and that the Court will become fully operational in early 2017. 

Italy says "Yes" to the Unitary Patent, 30 September 2015

Italy has approved the enhanced cooperation with the aim of establishing a uni-tary patent protection and becomes now the 26th Member of a European Patent System. Disputes over the establishment of the applicable translation arrange-ments, are no longer an issue, at least from an Italian point of view…

Draft proposal for rules on the European Patent Litigation Certificate and other appropriate qualifications issued, 9 September 2015 

The Preparatory Committee agreed the draft proposal for the Rules on the Eu-ropean Patent Litigation Certificate and other appropriate qualifications.

Please refer to the Explanatory memorandum and a copy of the Draft Rules on the website of the Unified Patent Court.

Ratification status of the UPC Agreement, 28 August 2015

The states, which have ratified the UPC-Agreement are (status 15/01/2015)

  • Austria 06/08/2013
  • France 14/03/2014
  • Sweden 05/06/2014
  • Belgium 06/06/2014
  • Denmark 20/06/2014
  • Malta 09/12/2014
  • Luxembourg 22/05/2015
  • Portugal 28/08/2015.

In the UK a bill is being processed by parliament and Ireland will also hold a referendum but no date has yet been announced. 

Despite the efforts made by these countries it is still a long way before the UPC regime comes into effect.

UPC Agreement ratified by Portugal, 7 August 2015

Portugal is now the eighth country to ratify the Agreement.

Please refer to the copy of the Agreement on the website of the Unified Patent Court.

18th draft of UPC Rules of Procedure published, 24 July 2015

The 18th draft, discussed by the Preparatory Committee and the Drafting Committee can now be found on the website of the Unified Patent Court. Please note, that this draft may be subject to modifications until it will be final-ly adopted in autumn 2015 by the UPC Preparatory Committee.

Business-friendly fee pattern due to "True Top", 24 June 2015

The Select Committee of the Administrative Council of the EPO have adopted the Top 4 proposal for unitary patent renewal fees.

For detailed information please refer to the press release on the website of the European Patent Office

Guidance on UPC transitional arrangements issued, 18 June 2015

As a result of the contentious of the Art. 83 transitional provisions, the Prepara-tory Committee has now issued some clarifications based on a set of questions and answers on the website of the Unified Patent Court. Unfortunately the set of questions and answers published by the Commission in December 2012 contradict the Preparatory Committees' position especially in number 14. As the answer to question 8 suggests, it also appears to be problematic, that with regard to the current version, the opt-out clause in Art. 83(3) ceases to have effect at the end of the transitional period rather than the opt-out being for the life of the patent.

Public Consultation on the Rules on Court fees and recoverable costs published, 8 May 2015

I. Fixed Fees

Actions  Fixed fee
Infringement action  11.000 €
Counterclaim for infringement  11.000 €
Action for declaration of non-infringement 11.000 €
Action for compensation for license of right 11.000 €
Application to determine damages 3.000 €
Appeal pursuant to Rule 220.1 (a) and (b) 16.000 €
Other counterclaims pursuant to Arti-cle 32 (1) (a) UPCA  11.000 €

II. Value-based fees

Value of action  additional value-based fee
Up to and including 500.000 €  0 €
Up to and including 1.000.000 €  5.000 €
Up to and including 4.000.000 € 25.000 €

III. Other procedures and actions

Procedures/actions  additional value-based fee
Up to and including 500.000 €  0 €
Up to and including 1.000.000 €  5.000 €
Up to and including 4.000.000 € 25.000 €

IV. Scale of ceilings for recoverable costs

Value of action Ceiling for recoverable costs of representation per instance and party
Up to and including 500.000 € Up to 75.000 €
Up to and including 1.000.000 €  Up to 150.000 €
Up to and including 4.000.000 € Up to 400.000 €

For further information please refer to the consultation document on the web-site of the Unified Patent Court.

CJEU dismisses both of Spain’s actions against unitary patent package, 5 May 2015

Spain seeks the annulment of the two regulations forming part of the ‘unitary patent package’, namely the regulation on the creation of unitary patent protection (Case C-146/13) and the regulation governing the applicable translation arrangements (Case C-147/13). By its judgments of May 5th 2015, the Court of Justice dismissed both of Spain’s actions.

For more information on the issue, please contact Matthias Eck.

Document
Court of Justice of the European Union | PRESS RELEASE No 49/15 | Luxembourg, 5 May 2015 

Updated version of the Preparatory Committee’ road map released, 15 September 2014

The Preparatory Committee has released an updated version of its road map with amendments to some of the key milestones. The milestones have been updated to reflect the work which has taken place this year and reflects the better understanding each Working Group now has to complete their respective plans. The Roadmap also reflects the communication from the Committee that the Court will not be ready before the end of 2015.

http://unified-patent-court.org/images/documents/roadmap-201409.pdf

For more information on the publication, please contact Matthias Eck at matthias.eck@cms-hs.com.

CMS Employee Inventor Rewards Survey 2014, 28 July 2014

CMS, Europe’s largest legal services firm, has released the results of its second annual Employee Inventor Rewards Survey, an analysis of employee reward schemes and policies in Europe. The online survey of 48 European companies’ inventor rewards policies focusses on voluntary rewards (countries such as Germany also have compulsory reward systems). The most significant proportion of those surveyed were multinational enterprises with more than 10,000 employees (42%), in addition to small and medium sized companies, from an array of sectors including technology, lifesciences and consumer products.

For more information on the survey, please contact Matthias Eck at matthias.eck@cms-hs.com

Danish referendum in favour of joining the UPC, 25 May 2014

On May 25, 2014, the Danish people voted in a referendum in favour of joining the Unified Patent Court (UPC). Once the Danish Parliament ratifies the Agreement, Denmark will be the fifth Member State to ratify it (after Austria, Belgium, France and Malta). Ratification by thirteen Member States is required for the Agreement to enter into force. For a statement of Commissioner Barnier follow the link: http://europa.eu/rapid/press-release_STATEMENT-14-172_en.htm

Interpretative note of the Preparatory Committee, 29 January 2014

On 29 January 2014 the Preparatory Committee published an "interpretative note" on the consequences of the application of Article 83 of the UPC Agreement. According to this note the aim of the UPC system was not the harmonization of national patent law or for national courts to have jurisdiction regarding the UPC Agreement.

It is the Preparatory Committee’s view that if an application for a European patent, a European patent or a Supplementary Protection Certificate that has been issued for a product protected by a European Patent is opted out (or during the transitional period the case is brought before a national court), the Agreement no longer applies to the application for a European patent, the European patent or the Supplementary Protection Certificate concerned.

As a consequence the competent national court would have to apply the applicable national law.

Link to the interpretative note: http://www.unified-patent-court.org/news/71-interpretative-note-consequences-of-the-application-of-article-83-upca

EPO Draft Rules relating to Unitary Patent Protection, 30 September 2013

The European Patent Office has circulated a draft set of rules relating to administration of the Unitary Patent. Of particular interest is the curious proposal at draft Rule 13(1)(i) that the register for unitary patent protection at the EPO shall include details of licensing commitments of the proprietor in international standardisation bodies. If implemented, this would mark a significant difference between the UP and other EP patents and impose a significant administrative burden for proprietors.

EPO Draft Rules relating to Unitary Patent Protection 

Austria is first EU country to ratify UPC Agreement, 18 July 2013

On 18 July 2013, a bill on the ratification of the UPC agreement by Austria passed the Austrian Parliament. Austria is the first EU member state to ratify the international agreement on the Unified Patent Court. The agreement must now be ratified by all 27 member states.

Read more on the official website of the Austrian Parliament on the bill:

http://www.parlament.gv.at/PAKT/VHG/XXIV/I/I_02447/index.shtml#tab-Uebersicht

Parliament approves EU unitary patent rules: European Parliament news, 11 December 2012