單一專利包裹法案（Unified Patent Package，簡稱UPP）是歐盟2012年底提出的立法計畫，由於過去類似提案都胎死腹中，究竟這個涵蓋歐洲共同市場的單一專利能否成功，當時包括筆者在內，許多人都心存懷疑。然而經過數月來的發展，事態變得越來越明朗，UPP很有可能在2016年底前上路。

之所以有UPP此一立法提案，目的是讓整個歐洲共同市場建立由EPO（歐洲專利局）統一審查公告的單一專利制度。過去未能建立歐盟單一專利制度，語文是其中一項主要問題，關鍵在於必須尊重所有歐盟成員國使用的語文。而依UPP規畫，只需使用EPO現行其中一種官方語文（即英文、法文、德文）公告。由於多數歐洲專利皆以英文公告，附加專利範圍的法文及德文譯文，其目的在降低翻譯成本，年費則向個別專利局繳交，從而使更多人（尤其是一般多使用英文的外國申請人）負擔得起歐洲專利申請所需。

除歐盟單一專利之外，UPP方案還計畫設立單一專利法院（Unified Patent Court，簡稱UPC），為歐洲共同市場內專利有效性及侵權與否提供穩定而單一的判斷機制，以遏止專利所有權人在歐盟不同會員國中選擇法院（forum shopping）的風氣，也希望藉此避免個別法院對EPO公告同一專利是否有效及（或）遭到侵害提出不同見解、產生混淆。

單一專利法院可以遏止「forum shopping」風氣

UPP在歐盟所有相關國家正式生效有兩項前提：法國、英國、德國的立法機關需批准UPP提案，且歐盟需有至少13個成員國批准UPP提案。由於法國、英國、德國是倡議最力的三國，批准UPP看樣子是只欠東風（也就是等數字敲定、有關布局就位），早晚的事。截至2015年10月，已有8國批准UPP提案，包括法國，因此除德國及英國之外，再有兩個歐盟國家批准，UPP就能生效。這當中英國已備妥立法提案（IP Act 2014），且跡象顯示芬蘭也正要跟進，因此歐盟似乎的確是有推動UPP的政治意願，至少政府公部門是如此。

設立UPP的其中一項難關是語文，而歐盟單一專利只會以三種官方語文擇一公告，無需在不同國家提交不同語文的譯文。如先前文章所說，針對這一點的反對意見主要來自義大利及西班牙，兩國的反對明顯有國家利益動機，其中一項動機是保護本國翻譯歐洲公告專利的智權服務業（至少這是兩國皆未加入倫敦協定的原由），因此原先兩國都不打算加入UPP。

其中，義大利願意參加UPC，但僅限義大利本土專利；西班牙則是到歐盟法院（European Courts of Justice，簡稱ECJ）狀告歐盟委員會（EU Commission）。今年夏天，西班牙敗訴，UPP基本取得ECJ發出的通行證；10月間，義大利也放棄抗爭，正式請求加入UPP。歐盟28國，若加計義大利，歐盟單一專利的保護範圍將可涵蓋26國，僅西班牙和克羅埃西亞排除在外。

新專利年費制度尚待確認

推動UPP的另一項難關是成本。之前EPO首度端出成本提案時，筆者即曾撰文討論。當時EPO提出TOP4、TOP5兩個成本方案，並對部分群體提供優惠減免，而後外界對他們各項評估的批評建議，EPO也都虛心接受，進而調整了TOP4的單一專利定價計算方式（單一專利年費，約當英國、法國、德國、荷蘭，即目前歐洲專利前四大進入指定國年費加總之和），第3至第10年的費用略有降低。義大利既已表態加入，目前尚不清楚規費計算方式會否再隨之調整，且EPO行政理事會也還未決定TOP4、TOP5何者為佳。

至於UPC，如先前報導，許多企業都對可能採行類似德國的禁制令制度（分別評估是否有侵權事實及專利是否有效，同時下達禁制令）感到憂心，但為減少這類問題產生，UPC有關條文業已經過修訂，且未來的UPC法官也都得接受訓練，有助於防止非專利實施實體（non-practicing entity，簡稱NPE）濫用此一制度。UPC倫敦分院已經完成選址，相關工作如火如荼進行中，而誰能代表在UPC出庭遞狀也已談定：執業律師，以及部分合格的歐洲專利執業律師（筆者即是其中一員），都可在各地UPC法院代表客戶處理有關事務。

作者： Stefano John 現任： Jinn IP事務所 歐洲專利律師   Stefano曾任職於歐洲專利局以及多家歐洲專利事務所，並於2009年取得歐洲專利律師資格。2012年至2015年間，他任職於北美智權，並開始定期為北美智權報撰寫專欄。目前Stefano於英國牛津創立Jinn IP事務所，協助各國客戶申請歐洲專利。

UPP and UPC projects march on
Stefano John / European Patent Attorney at Jinn IP

The UPP (Unified Patent Package) was a legislative package first introduced by the EU in late 2012. At the time, there was much scepticism whether this unified patent for the single European market would work where other proposals have failed in the past, including on part of this author. However the changes that have occurred in the last few months make it seem quite probable that the UPP system will be in place by late 2016.

The UPP is a legislative package that introduces the possibility a single unified patent for the entire EU single market. This would be examined and granted solely by the EPO. One of the main problems in setting it up in the past was the issue of languages and the need to respect all EU member states' languages. The UPP package introduces the concept that the patent should only be granted in the 3 languages currently used by the EPO, namely English, French and German. Thus the majority of the patents would be granted in English, with translation of the claims in French and German. The purpose would be to save money on translations and renewal fees being paid to separate offices, thus rendering the European patent system more affordable, especially to foreign applicants (as they use English).

Together with the unitary patent, a unified patent court system (UPC) would be set up by the UPP package to provide a stable unified patent system for determining validity and infringement across the single market. This would hopefully prevent forum shopping across different member states and confusion in infringement and/or validity patent cases arising from the same patent as granted by the EPO.

For the UPP system to come into force for all interested countries, 13 EU countries need to ratify the UPP package in their own country's legislative system. France, UK and Germany must be one of these 13 countries or, if 13 have already ratified, ratify it also. Given that these 3 countries were the most vocal in proposing this legislation, it seems certain that they will ratify when the time is right (i.e. when the numbers allow it and the relevant structures are in place). As of Oct. 2015, 8 countries have already ratified the UPP package, and only France is one of them. Thus 2 more EU countries need to ratify it, together with Germany and the UK and the UPP system will come into force. The UK has the relevant legislation already in place (IP Act 2014) and there are signs that Finland is preparing to ratify. Thus it seems that the political will, at least on part of the governments, is there to put in force the UPP system.

One of the main obstacles with setting up the UPP system was languages, and the fact that the patent would be published as granted only in one of the 3 languages without requiring translation in different countries. As mentioned before in this newsletter, the main opponents to this aspect of the legislation were Italy and Spain for clear national motivations. One such motivation, though not the only one, was to protect their national IP services industry that earns  from filing translations of granted EP patents (at least this is the reason neither country joined the London Agreement on the translation of EP patents). As such, both countries stated they would not adhere to the UPP. Italy would adhere to the UPC, but only for national Italian patents. Spain started proceedings against the EU Commission before the European Courts of Justice (ECJ). Over the summer, Spain lost these proceedings; the ECJ basically giving their go-ahead to the UPP system. In October 2015, Italy also gave up and formally requested to join the entire UPP Package. At present, if one included Italy, a single unified patent would cover 26 of the 28 EU member states, leaving only Spain and Croatia out of the EU patent's territorial monopoly.

Another serious factor regarding the UPP was the costs involved. The author has spoken before about this topic when the EPO first proposed their costs. The EPO proposed two cost structures: “TOP4” or “TOP5” with some discounts for specific parties. The EPO has since taken on board some of the criticism in their evaluation and adjusted their TOP4 calculations for setting the price of a unified patent (unified patent price of renewals is roughly equal to the cost in paying renewals in the top 4 countries for current EP patent validation, which are UK, France, Germany and Netherlands). As a result, the TOP 4 cost has been reduced slightly for years 3-10. It is not clear if the fact that Italy wishes to be part of the Unified Patent now may change this calculation again. The EPO Admin Council still has to make a decision on whether TOP4 or TOP5 is the more appropriate cost system to implement.

With regards to the UPC, one of the main issues that worried many companies was the possibility of having the injunctive system (evaluating infringement and validity separately and imposing injunctions in the meanwhile), as practised by some countries (e.g. Germany), applied to unified patents across the entire single market. We have already covered this in a previous article. The UPC has modified the wording of the relevant provisions to try and curtail this happening and the future UPC judges have been trained to spot possible abuse on part of non-practising entities. The site in London for the central division of the UPC has been decided and work on its conversion has already started. The question of who can act before the UPC has also been decided – attorneys-at-law and some qualified practising European Patent Attorneys (such as the author) will be allowed to represent clients in all the European UPC courts.

Not every issue regarding the UPP has yet been decided and the UPP system is still not in place. But if the political will remains, it should not take long for it to come into force. Most obstacles have been surmounted and most internal parties/lobbies opposing it have been dealt with. Of course, stronger factors affecting politics across the entire European continent and within the EU could still derail the entire UPP project, but it now seems that such an event might occur after the UPP has already come into force and thus probably cannot affect it, or no as much!

Author: Stefano John, European Patent Attorney Current： European Patent Attorney at Jinn IP   Stefano John has previously worked at the EPO and for a variety of European patent firms, both before and after qualifying as European Patent Attorney in 2009. Since 2012, he has worked at NAIPO, often contributing to this newsletter. Since Oct. 2015 he has started Jinn IP – a European IP firm tailored for foreign applicants wanting to file in Europe based in Oxford, UK.

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