西班牙同時也在歐洲法庭(European Court of Justice;ECJ),針對於UPC和UPP的非法行動,特別是對於歐洲專利局(EPO)僅認可的那些官方語言–德文、法文與英文,向歐盟提起了訴訟。幾個月前,似乎有些消息靈通的觀察家認為,歐洲法庭將會撤銷西班牙的訴訟。然而,在EPO中發生的事件已經改變了法律觀點。在這裡屬於UPP之核心的歐洲專利局,即使其並不屬於歐盟的一部分,仍然是公認的唯一可以發出任何UPP專利的專責機關。
Developments on the European Patent System Stefano John / NAIP Education & Training Group , European Patent Attorney
As has already been reported, in 2012-2013, the European Union Commission and EU Council set up a system to obtain an EU-wide patent right called the European patents with unitary effect (Unitary Patent Protection, UPP). The UPP could then be enforced or invalidated by some dedicated national EU Courts and/or a centralized EU Court (Unified Patent Court, UPC). The aim of the reform is to offer businesses an alternative to maintaining and enforcing lots of national patent rights in separate EU countries by simplifying the existing system and support a cost effective route to patent protection and dispute settlement by having a unitary effect.
Before such a system comes into effect, it is necessary that 13 countries, including the three largest economies of the EU - DE, FR and GB – ratify the agreement. At the moment 6 countries have ratified the agreement. It is now estimated that such a system will not come into force until late 2016 at the earliest.
But, as has already been reported, there are still some significant obstacles. The UPP and UPC system was developed as a political compromise that left many IP professionals troubled as to how it would operate in practice. This is particularly evident when one looks at the difference in deciding infringement and invalidity practices between UK and DE courts. As the UPP has unitary effect over the entire EU, it is clear that the differing standards used within these jurisdictions would lead to some inequitable forum shopping. On this aspect, the most recent rules of procedure of the UPC on how the different courts should operate have not given any clearer guidance.
There are however even bigger uncertainties. The system was a compromise that left some large countries at a linguistic disadvantage. The two largest, Italy and Spain have therefore not adhered to the system. In Italy’s case, they wish to adhere to the UPC (Centralized court system), but not to the UPP. At present, the Italian government is polling local stakeholders to see if and how they should change their position. It would seem that most local stakeholders would like Italy to not adhere to both the UPP and the UPC.
Spain meanwhile has initiated an action against the EU before the European Court of Justice (ECJ) on the illegality of the UPC and UPP, particularly because the only official languages recognized are those of the EPO – DE, FR and ENG. A couple of months ago it seemed to some informed observers that the ECJ would set aside the complaint by Spain. However, events at the EPO have changed the legal perspective. Herein lies a central aspect of the UPP - the EPO, even though not part of the EU, is recognized as the only legal authority allowed to issue any UPP.
Currently there is considerable disquiet in judicial circles around Europe at the manner in which the EPO is managing its internal affairs, especially with respect to breaching some generally well accepted trade union rights and with respect to whether there is a proper separation of powers and responsibilities between the executive branch (the President of the EPO and his office) and the judicial branch (the Board of Appeals and the Enlarged Board of Appeal). While the EPO is attempting to resolve such issues, it must be remembered that the EPO is founded on the EPC alone, and changing such a treaty without a long and cumbersome diplomatic conference is difficult. It is important to remember that this is not mere legal pedantry as, for example, if it cannot be proven that the judicial branch is properly autonomous to the executive branch, then the EPO may not satisfy the legal requirements by which it grants patents according to the German constitution and this may create a serious problem to the validity of many/all German patents granted by the EPO. This will not be allowed to happen, but it fortifies Spain’s argument that the UPP and UPC are not legally valid rights within the EU framework. Thus Spain may yet win the case which would spell the end of the UPP/UPC system, at least as proposed.
Under the system proposed, the applicant applies for a European patent at the EPO. The EPO handles the application in accordance with the EPC and, if all relevant criteria are met, eventually grants a European patent. Under the present system, the applicant then has to convert the granted European patent into national patent rights. If the applicant wishes to have patent rights in Spain and Italy, this seems to be the only way in which to obtain patent rights in those countries in the future (if one applies through the EPO, as opposed to separate national patent offices which always remains a separate, if expensive option) as they have stated they will not recognize the UPP (at least at present). For the countries within the proposed UPC and UPP system, one would have two options once the system enters into force. One can carry on with the present system has the option of either converting into national patents in those countries on an ad hoc basis. Alternatively one could simply request the EPO to grant a single UPP. The main difference would be that the UPP would have to be enforced/invalidated in the UPC and would cover all EU countries within the UPP system.
Under this aspect, the most recent news is very interesting because it finally allows one to understand if the UPP could be viable or not. The EPO have proposed the costs involved in obtaining and maintaining the UPP. This basically deals with renewal fees (as opposed to renewal fees paid to national countries for maintaining separate national patent rights in separate countries). It must be remembered that the EPO already collects renewal fees for applications still pending before it and the renewal fees go to national countries only once granted. The EPO have proposed that the renewal fees for the UPP should be calculated on the basis of being near/equivalent to the cost of maintaining and renewing the national patent rights from the 10th year renewal onwards in the 4 countries (DE, FR, GB and NL) which are most validated at present (TOP 4) and within the system (i.e. not Spain and Italy). Alternatively, they propose that it could be the TOP 5 (DE, FR, GB, NL and SE) while offering discounts to SMEs, natural persons, non-profit organisations, universities and public research organisations. These sums are illustrated in the Table here below:
Year to which renewal fee applies
TOP 4 (DE, FR, GB and NL) (Euros)
TOP 5 (DE, FR, GB, NL and SE) (Euros)
2nd
350
350
3rd
465
465
4th
580
580
5th
810
810
6th
855
880
7th
900
950
8th
970
1100
9th
1020
1260
10th
1175
1475
11th
1460
1790
12th
1775
2140
13th
2105
2510
14th
2455
2895
15th
2830
3300
16th
3240
3740
17th
3640
4175
18th
4055
4630
19th
4455
5065
20th
4855
5500
Total costs
37995
43615 (41655 for reduced groups)
Caution should be exercised in using these numbers as they are only the first one proposed by the EPO. Many different stages have to be passed through and many events have yet to occur before the EPO has to officially announce the fees.
As can be seen, the total costs are quite high. Most commentators seem to believe that the TOP4-TOP5 level is too high to be inviting for patent holders, particularly given that the UPC system in which they would have to be enforced is not well understood and clarified yet. Many thought that TOP 3 level would have been more appropriate. This would certainly be preferable as it would have been cheaper, but I would suggest that the above sums hide something not always very clear to EU based commentators.
EU based commentators forget the ancillary costs and effort involved in maintaining patent rights in separate EU countries for foreign applicants, such as for example hiring the services of a patent annuity firm or a variety of separate EU based patent attorney firms and the costs in managing such patent rights. The removal of such ancillary costs (because one would have to only deal with the EPO to maintain the UPP – an equivalent of all patent rights) may make the costs of the UPP as proposed by the EPO more attractive, at least for foreign applicants.
Author:
Stefano John, European Patent Attorney
Experiences:
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO