EPO confirms 'secondary legal framework' now in place to support unitary patent reforms

Out-Law News | 22 Dec 2015 | 4:13 pm | 2 min. read

The European Patent Office (EPO) has said that "a complete secondary legal framework" to underpin the unitary patent and Unified Patent Court (UPC) reforms has now been established.

EPO president Benoît Battistelli said that the establishment of the framework means "the preparations for the unitary patent are complete".

"We are now legally, technically and operationally ready to deliver the unitary patent," Battistelli said. "The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs."

In its statement the EPO said that the secondary legal framework comprises "the implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states".

Patent law expert Victoria Bentley of Pinsent Masons, the law firm behind Out-Law.com, said that the UK's forthcoming referendum on whether to remain a member of the EU could impact on the timetable for the reforms.

"Participation in the new unitary patent package is open to all EU member states," Bentley said. "Of the 28 potential participants, the unitary patent will apply only in those member states that participate in the Unitary Patent Regulation and sign and ratify the UPC Agreement."

"Before unitary patent protection can become a reality, at least 13 member states – which must include France, Germany and, for the moment, the UK – must ratify the UPC Agreement. The agreement will enter into force on the first day of the fourth month after the deposit of the 13th instrument of ratification or accession. From that date, European patents which have not been opted out and unitary patents will be subject to the jurisdiction of the UPC. Currently eight member states, including France but not the UK or Germany, have ratified the UPC Agreement," she said.

"It was expected that the UK’s ratification would take place soon, and well ahead of the promised referendum on whether the UK should be in or out of the EU. However, as it is increasingly likely that the referendum will now take place in the summer or more likely the autumn of 2016, postponement of the UK’s ratification is possible, although the UK Intellectual Property Office (IPO) confirmed to us in June that it was pushing ahead with ratification and that the necessary preparations should be completed by spring 2016. As long as the UK is a member of the EU, its ratification is likely to remain mandatory in order for the UPC to proceed," Bentley said.

In an article for Out-Law.com last month, Bentley explained in more detail the potential implications for businesses of the new unitary patent and UPC regime and how the UK's potential exit from the EU could impact on both the timescale for, and operational aspects of, the new framework.