The present article will discuss the unitary patent package which will start in the European Union with effect in April 2023. The article is divided into three parts. Firstly, it introduces the readers to the various benefits of the unitary patent system which underlines the reason for its necessity. It allows the readers to understand and appreciate the concerted efforts put in by the European Commission to implement this system in Europe. This part also elaborates on the current system of granting patents in Europe under the European Patent Convention Treaty. The second part of the article discussed the history and the struggle the European Commission faced in introducing the unitary patent system in the European Union. The third part explains the unitary patent package and its three important elements namely, the unified patent, the language of the unified patent application and the unified patent court. Finally, the article concludes by providing the readers with information about the current status of the unified patent system in Europe.
Unitary Patent System – European Patent Office (EPO)
Benefits of the Unitary Patent System: There has been a concerted effort by the European Commission to revolutionise the patent-granting system of the European Union. The efforts are directed towards implementing a uniform patent granting system which will be applied in all member countries of the European Union. This new uniform system would be beneficial at many levels. It is to be called the unitary patent system. Which will better the current standards of European patent protection. The unitary patent will lower the cost of applying for a patent in Europe. This will prove to be an incentive to individuals, companies and research organisations and increase patent registration in Europe. This will lead to an increase in the levels of innovation and research being carried out in Europe which will consequently lead to growth. The biggest benefit of this unitary patent system is that it will lower the translation costs that applicants file with their patent applications. Another big benefit will be that the current prohibitive costs required for national validation will get relaxed. Due to these validation costs, patentees would get their patents registered only in some member countries of the European Union. This negatively impacted the patentees as their inventions were left vulnerable to being copied in other European jurisdictions. With the unitary patent system, they will be able to get their patent registered in all member countries of the European Union. This will offer them greater protection.[i]
The Current Patent Granting System of EU: EPC: To understand the unitary patent system, it is important to first discuss the current system of granting patents in the European Union. European Patent Convention (EPC) is the treaty under which EU patents are granted. The EPC was signed in Munich in 1973. It came into operation on 1 June 1978. This treaty establishes the European Patent Office, the executive branch of the European Patent Organisation (EPO). It does not provide for a pan-European patent. Rather it provides for a bundle of national patents in the contracting states. At present, there are 38 contracting states. The current process under this treaty involves making an application to the Examining Division of the EPO which has its headquarters at Munich. The application for a grant of the patent must mention the contracting members/countries in which the patent protection is wanted. The three official languages in which EPO functions are English, German and French. The application for the grant of the patent must be made in either of these three languages. The successful applications get national patents in all the contracting members/countries that were mentioned in the patent application. There is an elaborate opposition mechanism. The European patents which are granted under the EPC can be centrally challenged. There is no need to file opposition applications separately in the states where patent protection was granted. The process is to file opposition applications in the Opposition Division of EPO nine months after the grant of the patent. Appeals against the decision of the opposition division and examining division are heard by the Technical Board of Appeal. There is a provision to refer important questions of law to the Enlarged Board of Appeal. This can be done either by the Board of Appeal or by the President of the EPO. The EPC was amended in 2000. This amended version came into effect in 2007. The purpose behind the amendment was two fold. The first was to modernise the patent granting system in Europe. This step was imperative because the Europe of 2000 was drastically different from the Europe of 1973. The second was to bring the patent granting system of Europe in line with the Patent Law Treaty (PLT) and the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). PLT and TRIPS are international treaties administered by the World Intellectual Property Organisation (WIPO). These treaties determine the international framework for granting patents. Various notable changes were brought in the EPC 2000. The role of the contracting members was increased with the requirement of holding a Conference of Ministers every five years. This was done to increase the political responsibility of the members over EPO. Powers were given to the Administrative Council to amend the EPC when the need arose to bring it in sync with international trends. Efforts were put in to simplify the process of granting patents under EPC. The requirement of translation of the patent application was pushed to a later stage. Applicants were given the liberty to file the patent application in any of the official languages at the first instance. The search and examination process was simplified, with it occurring only in one location and not at different locations. The process to amend the patent was changed. The earlier requirement of filing for amendment at different national offices was done away with. Now the amendment could be filed centrally with the EPO. The doctrine of equivalents was introduced in the Protocol on the Interpretation of Article 69 of the EPC. The doctrine of equivalents is a concept of patent jurisprudence under which a claim of infringement can be filed even though not every part of the patent is copied in the infringing product. A legal basis was granted to the agreement between contracting members to establish a central patent court.[ii]
Road To EU’s Unified Patent Package: History
Community Patent Convention: Efforts were invested in developing a centralised procedure to grant patents in Europe. This led to the adoption of the Community Patent Convention (CPC) in 1975 which was signed in Luxembourg. It aimed to not only simplify the grant of patents in Europe but also lower the costs of the process. However, it did not come into force as it was not ratified by all contracting members.[iii]
The Failed Attempts of 1989 and 2000: The endeavour to establish a centralised system of grant of patents did not die with the CPC. There was another attempt made in 1989 to introduce a community-wide patent. However, it had to bite the dust due to a lack of ratifications from the contracting states. In 2000 a proposal was again put forward to establish a community patent. It was aimed at reducing translation costs and establishing a centralised court to hear infringement disputes. Unfortunately, this proposal could not reach the desired finality due to the breakdown of talks.[iv]
Opposition by Spain and Italy: These setbacks did not stall the efforts of the European Commission. In 2007 talks were renewed to improve the patent granting system in Europe. These negotiations were able to take forward the proposal of a single European patent also called a unitary patent and a unified patent court. These negotiations were not without their ups and downs. The main point of contention between the contracting members was the issue of language. Spain and Italy opposed the fact that the official languages were limited to English, German, and French. The stalemate created by the countries was overstepped by members adopting a unique mechanism called enhanced cooperation. Under this, if at least nine members agree with any EU legislation, it is not stalled by any opposition and it moves forward. Eventually, other member states also agreed to move ahead with the proposal of the unified patent package.[v] Only Spain and Italy held their grounds of opposition. They moved the Court of Justice of the European Union (CJEU) against the operation of the unified patent package and the use of the enhanced cooperation mechanism. They argued that it was discriminatory and should be annulled. However, the CJEU dismissed this case[vi] along with other complaints[vii] filed by Spain in this regard.
The Unified Patent Package
Unified Patent System: Thus, the doors for a European unitary patent system were wide open again. This led to the adoption of the unitary patent package. It has three major elements. The first is the regulation to create unitary patents in Europe. Since the current system of granting patents is time-consuming, costly, and confusing. One of the major aims of the unitary patent is to eliminate these problems. The unitary patent will work as a single patent in all the member states unlike the bundle of patents available in the earlier system. The European Patent granted by the EPO will not automatically become defunct. It will work along with the national patents and the classical European patent. The process to get protection for patents with unitary effects in Europe is quite simple. It will be granted and regulated by the EPO. Applicants who want the unitary effect for their patents will have to request the same from the EPO within one month of the grant of their European patent. The renewal fees for the patent will have to be given only once to the EPO under the new system. This is a welcome change from the earlier system where renewal fees had to be given separately in different national offices.[viii]
Reducing the Translation Costs: The second element of the unitary patent package is regulation specifying the language applicable in the unitary patent system. This has been a contentious issue on the road to implementing the unitary patent package. The aim is to lower the costs of translations once the European patent is granted, and further translations are required only in cases of disputes. Under the new system like the earlier system, the patent application must be filed in any of the three official languages that are English, German or French. It will have to be translated into official languages if it is filed in any other language in the first instance. A system of compensation has been put in place to reduce the costs of translations. Reimbursement of the transaction cost up to a limit will be given to European small-medium enterprises, natural persons, non-profit organisations, universities, and public research organisations if they file patent applications in any official language of the European Union other than English, German, or French. When the unitary patent is officially granted there will be no need for further translations. A problem with this system is that it negatively impacts the information function of patents. This function is essential as it helps third parties get information about the patent and avoid infringement. To tackle this problem the EPO has through an agreement with Google developed a free online translation service called Patent Translate. This provides for machine translation of patent applications without human intervention. The translations produced in this manner will only be for information purposes with no legal effect. [ix]
Unified Patent Court: The third element of the unitary patent package is the Unified Patent Court. This court will have exclusive jurisdictions over both European patents and European patents which have the unitary effect. The court will exercise its exclusive jurisdiction after the transitional period of seven years is over. The Unified Patent Court will have a Court of First Instance and a Court of Appeal. There will be local, regional, and central divisions of the Court of First Instance. The owners of a patent who wants to institute infringement proceedings will have the option to either file a case in the local or regional division where the infringement occurred, or where the defendant is a resident or at the central division if the defendant resides outside the territory of the EU. Cases about the revocation of a patent or declaration of non-infringement will only be taken up before the central division. The procedure of the court provides that in cases of infringement where a counterclaim is filed the regional or local division can refer the case to the central division. In this situation, the infringement proceedings can either be suspended or proceeded by the local or regional division.[x]
Conclusion: The first two elements will come into force only when the third element comes into force. The agreement for a unified patent court was signed in 2013 by 25 member states. Brexit stalled the process and pushed it to 2022. In January after Germany ratified the agreement the provisional application period started. This led to the appointment of judges and finalising the court premises. According to official announcements, the court will start its functioning in April 2023.[xi] With the start of the functioning of the court, 50 years of efforts to bring in a unitary patent system will ultimately conclude in Europe.
[i] European Commission, https://single-market-economy.ec.europa.eu/industry/strategy/intellectual-property/patent-protection-eu/unitary-patent-system_en (last visited Nov. 24, 2022).
[ii] Tanya Aplin and Jennifer Davis, Intellectual Property Law: Text, Cases and Materials 636-637 (Oxford University Press 4th ed. 2021).
[iv] Id at 640
[vi] See Kingdom of Spain, Italian Republic v Council of the European Union Joined Cases C-274 and 295/11, Judgement of the Court (Grand Chambers), 16 April 2013.
[vii] See Kingdom of Spain v European Parliament and Council of the European Union Joined Cases C-146 and 147/13, Judgement of the Court (Grand Chambers), 5 May 2015.
[viii] L. Bently, B. Sherman, D. Gangjee and P. Johnson, Intellectual Property Law: I copy therefore I am 410-411 (Oxford University Press 5th ed. 2021).
[x] Supra note ii, at 641
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