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。
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!
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.