 |
| London Central Division: a stage set for triumph or tragedy? |
The report of this excellent AIPPI seminar will be posted in two parts.
Brexit - implications, predictions and unanswered questions
Up first was Alan Johnson to identify some of the short and longer term implications of the Brexit referendum on the UP/UPC. He noted that the Brexit question does not just affect the UK - it affects the whole UP/UPC system given that the UK is one of the 3 mandatory countries and the host of a central division of the UPC. Before the referendum result, the UK had made real progress on implementing enabling legislation, and it was on track for ratification in accordance with the timetable. Between 23 June and 28 November 2016, there was little progress, and Alan was as surprised as anyone when the UK government gave an unconditional 'yes' to the UP/UPC project at the end of November by setting out its intention to ratify the agreements. Following that announcement, the Protocol on Privileges and Immunities was laid before Parliament on 20 Jan 2017 [the day of President Trump's inauguration - a coincidence or an attempt to bury a news story? wonders Merpel], and statutory instruments (SIs) for Scotland and the rest of the UK [i.e. secondary legislation] were drafted to implement the P&I Protocol. Shortly before the SIs were due to be considered by the Westminster and Holyrood legislatures, Theresa May announced her intention to call a general election, stalling the passage of the SIs. These are now unlikely to pass before the Holyrood and Westminster summer recesses begin on 30 June and 20 July respectively - thereby delaying UK ratification.
Given the requirement for 10 countries (in addition to the UK, Germany and France) to ratify before the new system comes into force, Alan noted that other countries are not yet ready for the provisional application phase (PAP) (e.g. Austria, Bulgaria and Portugal). Germany appears ready, but the question is whether it will proceed given continued uncertainty regarding the UK's involvement. The PAP phase is an important one, and includes adoption of the draft rules and judicial preparations. In light of the above, there are two likely possibilities - either the project remains on schedule, or there is a delay of around 3-4 months. This could mean that the new system goes live on 1 April 2018 [April Fool! cries Merpel]. What happens as regards the UK's involvement? There are several options:
1. Can the UK remain in the UP/UPC post-Brexit? Alan noted that before Brexit, it was widely assumed that one had to be a member of the EU to participate in the new system under the legal framework. Now, the general consensus seems to be that the UK can participate even after it leaves the EU (see for example the Pascoe opinion here.) [Switzerland and others: watch this space] A big query is whether the UK would need a mechanism to allow a reference to the CJEU to participate in the UPC, and what that mechanism might be [not to mention the political acceptability of such a reference mechanism ...]
2. Must the UK leave after Brexit, and if so, how? Alan noted that the UPCA has no exit provisions. If the UK joins and then leaves the UP/UPC system, would there be an implementation period?
3. Is there a hybrid option? Alan mooted a potential hybrid option. The UK may opt to stay within the UPC (on the basis that it is an international rather than a European Court), but exits the unitary patent component given that a UP constitutes a European right. Would this hybrid solution be politically more palatable?
It is difficult to second guess the UK government's position, but historically every UK government has been in favour of the UPC/UP on the basis that it is good for industry. Considerable time and money has been expended in getting to this point. Would the UK government really proceed with ratification with a view to leaving again in 18 months' time? On this basis, Alan optimistically predicted that the UK would make at least efforts to remain part of both the UPC and UP system. However, the current uncertainty is likely to continue for the next 12-18 months, and so users must plan with all options in mind.
The Unitary Patent system - a practical perspective
Michael Froelich was up next to explain the practical aspects of the UP system. He noted that a European patent would remain to be granted by the EPO in the usual way - it is only after grant that a patent can be converted to a UP. The claim set must be identical for all participating territories. Michael observed that UPs do not replace EPs, they co-exist with both EPs and national patents (for example, EPs will live on in Switzerland and other non-participating countries).
Brexit - implications, predictions and unanswered questions
Up first was Alan Johnson to identify some of the short and longer term implications of the Brexit referendum on the UP/UPC. He noted that the Brexit question does not just affect the UK - it affects the whole UP/UPC system given that the UK is one of the 3 mandatory countries and the host of a central division of the UPC. Before the referendum result, the UK had made real progress on implementing enabling legislation, and it was on track for ratification in accordance with the timetable. Between 23 June and 28 November 2016, there was little progress, and Alan was as surprised as anyone when the UK government gave an unconditional 'yes' to the UP/UPC project at the end of November by setting out its intention to ratify the agreements. Following that announcement, the Protocol on Privileges and Immunities was laid before Parliament on 20 Jan 2017 [the day of President Trump's inauguration - a coincidence or an attempt to bury a news story? wonders Merpel], and statutory instruments (SIs) for Scotland and the rest of the UK [i.e. secondary legislation] were drafted to implement the P&I Protocol. Shortly before the SIs were due to be considered by the Westminster and Holyrood legislatures, Theresa May announced her intention to call a general election, stalling the passage of the SIs. These are now unlikely to pass before the Holyrood and Westminster summer recesses begin on 30 June and 20 July respectively - thereby delaying UK ratification.
 |
| Aldgate Tower |
Given the requirement for 10 countries (in addition to the UK, Germany and France) to ratify before the new system comes into force, Alan noted that other countries are not yet ready for the provisional application phase (PAP) (e.g. Austria, Bulgaria and Portugal). Germany appears ready, but the question is whether it will proceed given continued uncertainty regarding the UK's involvement. The PAP phase is an important one, and includes adoption of the draft rules and judicial preparations. In light of the above, there are two likely possibilities - either the project remains on schedule, or there is a delay of around 3-4 months. This could mean that the new system goes live on 1 April 2018 [April Fool! cries Merpel]. What happens as regards the UK's involvement? There are several options:
1. Can the UK remain in the UP/UPC post-Brexit? Alan noted that before Brexit, it was widely assumed that one had to be a member of the EU to participate in the new system under the legal framework. Now, the general consensus seems to be that the UK can participate even after it leaves the EU (see for example the Pascoe opinion here.) [Switzerland and others: watch this space] A big query is whether the UK would need a mechanism to allow a reference to the CJEU to participate in the UPC, and what that mechanism might be [not to mention the political acceptability of such a reference mechanism ...]
2. Must the UK leave after Brexit, and if so, how? Alan noted that the UPCA has no exit provisions. If the UK joins and then leaves the UP/UPC system, would there be an implementation period?
3. Is there a hybrid option? Alan mooted a potential hybrid option. The UK may opt to stay within the UPC (on the basis that it is an international rather than a European Court), but exits the unitary patent component given that a UP constitutes a European right. Would this hybrid solution be politically more palatable?
It is difficult to second guess the UK government's position, but historically every UK government has been in favour of the UPC/UP on the basis that it is good for industry. Considerable time and money has been expended in getting to this point. Would the UK government really proceed with ratification with a view to leaving again in 18 months' time? On this basis, Alan optimistically predicted that the UK would make at least efforts to remain part of both the UPC and UP system. However, the current uncertainty is likely to continue for the next 12-18 months, and so users must plan with all options in mind.
The Unitary Patent system - a practical perspective
 |
| Michael Froehlich |
On costs, the renewal fees have been set at the level of the top 4 countries' renewal fees combined (i.e. Germany, UK, France and the Netherlands - given that Italy was not participating at that time). The cost advantages of a UP are significant, particularly when invalidation and translation costs for classical EPs are taken into account. Further, there are administrative benefits for users - one single renewal fee, one set of deadlines, one payee etc.
Michael explained that the EPO is currently finalising technical implementation of the UP, and the procedure for filing requests for UPs will be fully automated. There will be a new "Register for Unitary Patent Protection", which will form an integral part of the EP Register. There are three official languages for entries on the register. Michael demonstrated the new register by reference to a series of screen shots, which showed the information available to users of the new system (e.g. date of request for unitary effect, decision on request, date of registration of the UP, date of legal effect). Helpfully, the new register also displays the relevant territories for each unitary patent. Michael pointed out that UPs will vary with territorial coverage depending on the ratification dates for relevant countries.
Michael then covered some current UP initiatives at a European and national levels:
1. Possible EPO "sunrise period"
Michael explained that the EPO is considering allowing users to file requests for unitary effect 3 months before the system goes live (this would coincide with the opt-out provisions). The aim is to allow for a smooth transition to the UP system. No decision has yet been taken - watch this space for a decision.
2. Supplementary Protection Certificates
The agreements do not provide for a unitary SPC. Given the commercial importance of SPCs, the European Commission ultimately envisages a unitary SPC, however, this may not be achievable in the short term. Pending the creation of a unitary SPC, the Commission is expect to clarify (by way of a communication) that national SPCs can be obtained on the basis of a UP.
3. National validity deadlines
What happens if a patentee applies for conversion to a UP but that request is rejected after the deadline for a national patent has passed? The Select Committee is considering this issue. There seems to be momentum for a 'safety net' approach, whereby national deadlines should be held open until after the outcome of a unitary conversion request (Sweden, Finland, Netherlands and Germany are in the process of taking steps to implement a safety net).
4. Double protection of unitary patents and national patents?
The relevant regulations leave the question open as to whether double-protection of an invention is possible through both a unitary patent and a national patent. The vast majority of countries have opted not to allow double-patenting (for example, an offending UK national patent can be revoked by the Comptroller). However, Germany is lifting the prohibition on double-protection, and other participants are wondering whether to follow suit. One issue to avoid with double-patenting is double-enforcement. In Germany, a new provision provides for an 'estoppel defence' so that national proceedings would be dismissed by the German Courts where UPC proceedings are pending (or have already been decided) that cover the same subject matter.
Next up in part 2 - Tim Frain and Q&A session
The relevant regulations leave the question open as to whether double-protection of an invention is possible through both a unitary patent and a national patent. The vast majority of countries have opted not to allow double-patenting (for example, an offending UK national patent can be revoked by the Comptroller). However, Germany is lifting the prohibition on double-protection, and other participants are wondering whether to follow suit. One issue to avoid with double-patenting is double-enforcement. In Germany, a new provision provides for an 'estoppel defence' so that national proceedings would be dismissed by the German Courts where UPC proceedings are pending (or have already been decided) that cover the same subject matter.
Next up in part 2 - Tim Frain and Q&A session