Out-Law News 3 min. read

London could be given 'specialist' infringement and validity cases under proposed unitary patent court system

EU leaders could agree to divide responsibilities for providing main judicial oversight of a new unitary patent system between courts in the UK, France and Germany.

Plans to create a new unitary patent system have stalled on the issue of where a central divisional court dealing with questions over the validity and infringement of the new patents should be located. However, a German newspaper has reported that sources close to the discussions at issue said that the work of the central division court could be divided between courts based in London, Paris and Munich.

Paris would be the main seat and be supported by London, which would deal with "specific topics", and Munich, which would deal with "administrative" issues, according to an automated translation of Handelsblatt's report

A spokesman for the European Council, which is meeting in Brussels this week to try to find agreement on European patent reform among other things, told Out-Law.com that those plans were an option under consideration.

"It is a possibility that will be considered," he said. "The compromise that is on the table since December is to locate the central division for the court of first instance in Paris, but the UK and Germany were not satisfied so this [proposal] could be a breakthrough."

The European Council is an official body within the structure of the EU that gathers leaders of member states and the European Commission to determine general political policies and priorities for the trading bloc.

The spokesman for the Council added that the plans could see the London unitary patent court (UPC) deal with "specialist" cases, possibly including on unitary patents for pharmaceutical products. He said this may be a "consequence" if the "possible solution of splitting the functions and tasks of the central divisional court" is approved.

The spokesman said, though, that the proposals had still to be approved and that he was not sure "what degree of detail" would be agreed upon at the Council's conference.

"This would be a major step but it would not be the end of the road. There will be a set of steps to be accomplished, including the signing of the agreement and ratification," he said. An agreement by the Council could lead to unitary patent protection becoming reality in 2014, he added.

Plans to establish a cheaper and more efficient way for inventors to gain patent protection across Europe have been mooted for years. Europe-wide protection is only possible at the moment by validating a patent registered with the European Patent Office (EPO) in each individual country. To be valid in a country a patent must be translated into its language. The European Commission has sought a cheaper system because of what it has said is the prohibitive cost of that process.

In recent months 25 EU countries have moved closer to establishing a new framework around how that system would operate, however. If introduced, inventors would only have to apply once in order to obtain patent protection across the 25 countries, if their application was approved.

Under the unitary patent proposals a European patent holder would make only one application to the EPO for patent protection across the 25 EU countries that have signed up to the scheme, with successful patents being initially published in English, French or German and eventually translated into all three languages. Applications for unitary patent protection not made in any of those languages would have to be translated in order to be considered, although applicants would be compensated for the cost of this.

Italy and Spain have objected to the plans, with both lodging legal cases with the European Court of Justice (ECJ). Spain has said that restricting the language regime to English, French and German was discriminatory whilst Italy has said the plans are unlawful and would distort competition.

In March last year the ECJ forced a revision of the unitary patent proposals after stating that the plans at the time would be incompatible with EU law.

In an opinion it stated that plans to create a single court system for patents issued through the EU would interpret EU law but operate outside of the EU courts system, leaving citizens without recourse to action through the EU courts. Since then the EU Ministers have been working on proposals for a dispute system that works within the existing EU judicial structures.

Under the plans being discussed by the countries, cases concerning the validity or infringement of proposed new unitary patents would be heard by local, regional and central divisional UPCs where a "multinational panel" of three judges would sit. There would be the opportunity for local and regional UPCs to determine whether cases could be "bifurcated" – where questions over the validity of unitary patents would be determined separately from questions over the infringement of patents.

The central divisional UPC would be obliged to hear infringement and validity cases together. Currently in the UK these issues are tried together when raised in court proceedings.

UPCs would be able to refer questions about cases to the ECJ to help determine the outcome of cases - extending the jurisdiction of the ECJ into patent law in the process.

However, last month a UK parliamentary committee said the plans would negatively impact on small UK businesses. The European Scrutiny Committee said though that locating the central division UPC in London would limit that adverse impact.

In a separate report published earlier this week, the House of Commons' Business, Innovation and Skills (BIS) Committee described the UK Government's approach to discussions on the unitary patent reforms as "not fit for purpose."

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