EPO ready to register unitary patents

Out-Law News | 20 Jan 2020 | 12:08 pm | 2 min. read

The European Patent Office (EPO) has confirmed that it is ready to register new unitary patents, and believes the new patent system could be operational by the end of this year.

The option of registering unitary patents has been provided for in EU law as a means by which businesses can obtain patent protection for their inventions across multiple EU countries through a single application. The existing system of European patents requires patents registered at the EPO to be validated in each of the countries that businesses wish the patent rights to apply – this process entails the translation of those patents into the native language of each country and is costly and time consuming.

The unitary patent system has, however, still to take effect. The system relies on the establishment of a judicial framework to handle disputes over unitary patents. The Unified Patent Court (UPC) has been developed to perform this function, but the UPC regime has been held up as a result of legal challenges and uncertainty over Brexit.

For the new UPC system to take effect, at least 13 EU countries, including the three with the most European patents in effect in 2012 – Germany, France and the UK, must pass national legislation to ratify the UPC Agreement (UPCA). An international treaty, the UPCA has so far been adopted by 25 of the 28 EU member states. Spain, Poland and Croatia do not currently participate.

France and the UK have already completed ratification of the UPCA along with 14 other countries, but Germany's ratification process has been held up by a legal challenge brought before the country's Federal Constitutional Court. A ruling of the Karlsruhe-based court in the case is expected to be issued before the end of March 2020.

The UPCA envisages participation in the UPC system by EU member states only and so there is uncertainty as to whether the UK will be able to participate in the new patent framework after Brexit. The UK is scheduled to exit the EU on 31 January 2020 at the latest.

EU constitutional experts said last year that it is not "legally impossible that the UK can stay within the UPCA, even when not an EU member state", although it said that the outcome would only be possible with "innovative legal solutions".

One of the potential challenges to the UK's continued participation is squaring the UK government's Brexit policy of untangling the UK from the jurisdiction of the Court of Justice of the EU (CJEU) and the fact that the CJEU is envisaged as being the court of last resort under the UPC system.

The UK government recently stated that any future partnership the UK has with the EU "must not involve any kind of alignment or [CJEU] jurisdiction".

The EPO met with members of two committees that have been preparing the way for the new unitary patent and UPC system to become operational earlier this month. In a joint statement they provided an update on preparations and called for the "speedy implementation" of the new regime.

"The meeting made it clear that the EPO is ready to register the first unitary patents and that the Preparatory Committee has advanced its work as far as possible," the statement said. "However several key steps in establishing the UPC cannot be taken until the phase of provisional application is underway and therefore some work still need to be done."

EPO president Antonio Campinos said, though, that he is "confident that the necessary steps can be accomplished in time for the unitary patent package to become operational at the end of 2020".

The preparatory work undertaken for the new UPC regime includes the development of new rules of procedure for litigation before the UPC. Background work has also been taking place on the appointment of judges, installation of IT systems and other logistical matters – including the fitting out of the new UPC courts.