Previous Attempts to Create a Unitary Patent Protection
The proposal was reformulated in 2009, after the entry into force of the Lisbon Treaty, which introduced a new legal basis for the creation of EU IP rights. According to article 118 of the TFEU1, the creation of European IP rights follows the co-decision procedure, where the European Parliament must vote on the Commission’s proposal, and the Council votes by qualified majority. However, any language arrangements for the European IP rights require unanimity in the Council and only the consultation of the European Parliament.
Even though a general approach was agreed on in late 2009, between the EU ministers, regarding the creation of the EU patent, the translation arrangements remained out of the scope of the agreement. Discussion on the translation arrangements continued throughout 2010. However, it soon became clear that the required unanimity would not be reached. In light of this, several member states showed interest in establishing an enhanced cooperation between themselves.
The instrument of enhanced cooperation allows those EU countries that wish to continue to work together more closely to do so, while respecting the single institutional framework of the Union. Enhanced cooperation is regulated by article 20 of the TEU2 and articles 326 to 334 of the TFEU. It can be used only as a last resort and at least nine member states must participate.
In order to establish enhanced cooperation in the field of patents, 12 member states addressed a request to the Commission, which presented a proposal for an authorization decision to the Council on December 14, 2010. This proposal already contained the main elements on which the cooperation would be based. Soon after, all the remaining member states, with the exception of Spain and Italy, requested to join the enhanced cooperation. After obtaining the consent of the European Parliament, and despite continued opposition by Spain and Italy, the Council decided, on March 10, 2011, to authorize the member states to pursue the enhanced cooperation.
Following this decision, the Commission presented to the Council, in April 2011, detailed proposals for implementing measures: one on the substantive provisions applicable to the unitary patent, that will be voted by qualified majority and another on the translation arrangements, that will require unanimity (now only from the member states participating in the enhanced cooperation). These proposals are currently under discussion and on June 27, the Council agreed on the essential elements of both Regulations, pending the opinion of the European Parliament. This was a very important step forward, particularly as the agreement also covered the translation arrangements. It is now possible that a final political agreement could be reached by the end of 2011. That would allow for the unitary patent to be a reality within the next two years.
Patent protection in the EU can currently be obtained either by applying for patent protection separately in each member state, or by applying to the European Patent Office (EPO) for a European patent. With either of the current options, infringement enforcement is exclusively determined by national laws.
Under the national patent systems, an application must be filed at each relevant national patent office. The filing, examination, and grant of the patent follow the relevant national law. While, in practice, several international conventions have harmonized the national patent laws, there are still some remaining differences, the more notable one being the filing language which is usually the official language of each member state.
Alternatively, to obtain a European patent, applicants must file a single application with the EPO, which determines the patentability of the invention and issues the patent. The application can be filed in the official language of any EPC contracting state, but prosecution is done in one of the three official languages of the EPO (English, French, or German). However, the European patent is not a unitary title, but rather a “bundle” of independent, nationally enforceable, nationally revocable patents that only has effect in the member states designated in the application, and only after the applicant has taken the necessary steps in each designated country to “validate” the patent. Normally, this requires a translation of the patent in the official language of the member state and the payment of any necessary fees.
The draft Regulation creating unitary patent protection proposes to establish the unitary patent as a specific category of a European patent, granted by the EPO. Consequently, there will only be one single procedure (the one currently used in the EPO) for granting the European patent, and applicants will be able to choose, post-grant, to give their European patent unitary effect in all 25 participating member states. Such a patent will then have equal effect in all the 25 participating member states and it will only be possible for those effects to be limited, transferred, revoked, or lapsed in respect of all 25 member states. It will still be possible to validate the European patent in other selected states of the EPC, in addition to the unitary effect, as well as to not have unitary effect at all, in which case the European patent will only be valid in the member states where it has been validated. Also, access to the unitary patent will be available to businesses from non-participating member states.
As regards the translation arrangements, it is envisaged that the patent will be granted in one of the three official languages of the EPO and claims will be translated into the other two official languages. The possibility to file in any official language of the EU will still exist, along with a scheme for compensating the costs of translation into one of the official languages of the EPO. Additional translation arrangements are foreseen in case of a legal dispute relating to a unitary patent. Also, during a transitional period and until a system of high quality machine translations becomes available, the specification of the patent must be translated into English whenever the patent is granted in either French or German, so as to ensure that all European patents with unitary effect are available in English, the customary language in the field of international research and publications.
Unified Patent Litigation System
Alongside the creation of a unitary patent in the EU, and perhaps of even greater importance for the competitiveness of the EU, is the need to have a unified patent litigation system. Currently, where the holder of a European patent wishes to pursue an infringement, invalidity counterclaim or revocation action, it may have to go before the courts of the different member states where the patent was validated and be subject to diverse national laws and procedures. This system increases the risk of contradicting court decisions and legal insecurity.
In order to remedy these issues, the European Commission proposed, in 2009, to create a unified patent litigation system, by an international agreement between the EU, its member states, and the other contracting states of the EPC. This system would have the advantage of creating a single, integrated jurisdictional structure to deal with litigation both on existing European patents and the future unitary patent. The court would be comprised of a court of first instance with several local and regional divisions set up in different member states, based on the average number of cases brought before each member state, and a court of appeal. The language of the proceedings would be the one of the member state where the court is located and that same language would be used in proceedings at the appeal level. The decisions of the court would have effect on the whole territory of the EU and the territory of the contracting states of the EPC for which the European patent has taken effect (in case of litigation involving the European patent without unitary effect).
Given the extent of the court’s jurisdiction, the Commission decided, in June 2009, it would be appropriate to request an opinion from the Court of Justice on the compatibility of the envisaged agreement with the EU Treaty. In March 2011, the Court of Justice concluded that the agreement was not compatible with the EU Treaty. The Commission is currently discussing how best to address the issues raised by the Court and it will soon propose new specific jurisdictional arrangements that would be compatible with the Treaty. At the moment, it is unclear which of the features that were previously envisaged will be maintained or amended. However, in order to comply with the opinion of the Court of Justice, it is likely the new court structure will only have jurisdiction on the EU territory and will not cover all contracting states of the EPO.
1 Treaty on the functioning of the European Union, OJ C 83, 30.3.2010
2 Treaty on European Union, OJ C 83, 30.3.2010
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Rouget F. Henschel