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Unified Patent Court - A Real Proposition?

About The Author

Maxi Kussatz (Writer)

Maxi graduated from the University of Birmingham in 2013, where she studied Law and Business. Having trained with the German Legal Consultancy firm Meyer-Reumann and Partners in Abu Dhabi, Maxi is now returning to the UK to study for here LPC at University of Law Cambridge. Maxi's interests lie in EU Law, International Law, and Intellectual Property.

Introduction

In 2013, no less than 14,971 patents were filed in the UK, of which only 2,464 were granted by the Intellectual Property Office (‘IPO’).  A patent is an exclusive right granted by an authority to an inventor, prohibiting others from making, using or selling the invention in that country during the life of the patent. However, it does not give the inventor the right to use. For example

… [I]f you have a patent on a ‘vessel to hold coffee’ and I have a patent on a ‘handle for a vessel’, then I can prevent you from putting a handle on a coffee cup and you can prevent me from attaching a cup to my handle.

Patent protection is available for any product, process or design that meets certain requirements of ‘novelty, non obviousness and utility’.

There are many reasons as to why patenting one’s inventions is important; notably, these include:

  • Exclusive rights;
  • Strong market position;
  • Opportunity to license or sell the invention; and
  • Positive image for your enterprise

UK Patent Law

Multiple Acts, Rules and Directives make up the patent legislation in the United Kingdom. These set out legal rights, duties and procedures for patents and patent registration. 

The most important piece of legislation is the Patents Act 1997. It sets out the legal rights and duties for UK patents and their applications. Furthermore, it describes how UK law relates to the European Patent Convention (EPC) and the Patent Co-operation Treaty (PCT). Additional legislation includes the Copyright, Designs and Patents Act 1988, the Regulatory Reform (Patents) Order 2004, and the Patents Act 2004, which have all amended the 1977 Act.

A patent is a legal right established by the UK Intellectual Property Office for a new invention. It allows the holder of the patent to take action against others who use their invention without their authorisation. Article 63 of the European Patent Convention requires all Member States of the European Union to give patents a maximum lifetime of 20 years, from the date of the patent application.

To obtain a patent in the UK you need to apply to the UK Intellectual Property Office, which then decides whether the invention is patentable. It may take up to four years after the application has been made until the patent is granted.

In order for an invention to be patentable, your invention must meet the following conditions:

  1. It must be new; it must not have ever been made public in any way before the application to the UK Intellectual Property Office;
  2. It may not be an obvious development of something that is already known; and
  3. It must be capable of being made or used in any type of industry, including agriculture.

Additionally, an invention may not fall into excluded categories, which comprise works of art, scientific theories, mathematical methods and the presentation of information.

Although a patent belongs to the inventor, it is possible to pass on the rights to a third party. During the course of his employment, the patent right typically belongs to the employer of the inventor.  Furthermore, the owner may license the patent for the use of others.

Within the UK, it is possible to obtain an injunction to stop patent infringement and claim damages in form of compensation. This can be achieved a soon as an application has been made and may even be claimed retrospectively. This can be done at the High Court, the Patents County Court or the UK Intellectual Property Office.

However, you cannot sue for infringement until your patent is granted. Nevertheless, as highlighted above, it may be possible to claim damages in retrospect from the date you patent application was published. 

In order to receive the same amount of protection in other countries, it is necessary to file further patent applications.

The Unified Patent Court

As there is no such thing as a ‘worldwide patent’, it is not possible to receive universal protection. It is however possible to apply for patent protection in several countries at once. This is made possible using the European Patent Convention (EPC) or the Patent Cooperation Treaty (PCT).

The Unified Patent Court (UPC) is a proposed common patent court open for participation of all member states of the European Union, which is means to create a platform for uniform litigation processes within the EU.

The UPC will hear cases concerning infringement and revocation proceedings of European Patents. The court’s rulings are directly applicable to all signatory countries of the EPC. In February 2013, the Agreement on a Unified Patent Court, which was signed as an intergovernmental treaty by 25 states, established the UPC. It will need to be ratified by at least 13 states, including France, Germany and the United Kingdom to enter into force. Currently only, five Member States have ratified the Agreement.

In Article 24 of the Agreement the sources of law that UPC judges rely their decisions on are laid out and include:

  • The Patent Agreement on a Unified Patent Court;
  • The European Patent Convention;
  • Other international agreements applicable to patents and binding on all the Member States; and
  • National law

Overall, numerous benefits arise out of the creation of the UPC. Just a few include, lower translation costs, cheaper pan-European protection, and a single court covering all member states leading to reduced litigation costs and the removal of the possibility of different infringement and validity outcomes in different member states. 

In addition to the practical and procedural benefits, I believe that this step of unification will create the possibility of a commercially advantageous environment within the EU from which all Member States may benefit.

Critique of the UPC

Although it is clear that many advantages derive from the creation of the UPC, many critics believe that these are ‘alleged benefits’ and that the proposed system is far from perfect. In October 2012, the Max Plank Institute even published ‘the 12 top reasons why the Unified Patent Court might prove disastrous’. 

Professor Hility explained: '... [w]hile a superficial glance may create the false impression of a patent law advancement through the proposal, it instead actually threatens to forestall the necessary legal progress and innovation capacities for the foreseeable future'.

One major critique is that the UPC is based on an unbalanced legal basis. It is said to have insufficient exceptions and limitations. The substantive regulations laid down do not take into account present challenges to patent law. It does not tackle questions such as a general research exemption or obligatory licenses for biotechnological research tools, as for example considered in the newly reformed Swiss Patent Act (biotechnological inventions concern biological material that reproduces itself and exhibits great complexity).  Various amendments to the Swiss Patent Act allow for these peculiarities to be efficiently and suitably protected. There is much to be said about practical issues that arise, but the legal incoherence are of a much graver nature.

Furthermore, the UP Regulations entail articles with discriminatory effects. Article 10 of the regulation provides for the appliance of national law to the unitary patent as an object of property. Patents, which have been applied for by firms without a residence of place of business in one of the Member Sates participating in the enhanced cooperation, will be subject to a foreign law, namely German law. By contrast, patent applicants established in one of the participating States will benefit from the application of their domestic law.

Many academics, such as Thomas Jaeger, believe that the ‘unitary patent’ was created on an incorrect legal basis. In Art. 118(1) of the TFEU the legislative basis for the 'creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union' is laid out. This leaves no legislative digression as to what characteristics of the unitary patent may be controlled in the UPC agreement. If disregarded, the procedural safeguards provided for in the Treaties would be undermined and the essence of Union law destabilised. Jaeger believes that this volatile legislative basis will cause issues in future even if practically the UPC operates successfully. 

After taking into consideration the extensive debate on whether or not the UPC is founded on the appropriate legal basis or not, it seems to me that this is much more an academic discussion, which should not necessarily influence one’s judgment on the benefits that the UPC will undoubtedly create for future patent infringement cases.

Conclusion

Even when keeping both the benefits and critiques in mind, it will be virtually impossible to make a judgement on how effective and advantageous the UPC will be before it comes into action. Whilst it seems there will be many cost and efficiency advantages to the new system, the prospective issues mean that companies should consider carefully before deciding which form of European patent protection will be best for them.

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Tagged: Commercial Law, European Union, Intellectual Property

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