EU & Patents

European Patents

The European Union has been active in harmonizing intellectual property rights. It has provided for a Community Trademark and European Patent in tandem with national intellectual property rules. It has also provided for minimum protections in respect of certain aspects of intellectual property. It has also been at the forefront of extending intellectual property protection into information technology and biotechnological areas.

The European patent gives inventors the option of obtaining a single patent valid through the European Union. In addition, national patents have been largely harmonized, due in part to a number of international conventions to which all EU members are a party.

The Munich Convention provides a single procedure for granting a European Patent. It established a European Patent office which grants patents which are then deemed national patents. 31 countries are party to the European Patent Organisation.

In addition, the EU has provided for the single EU European Patent  The European patent stands alongside national patents. It supplements and uses the Munich Convention procedures. The European patent is not a series of national patents but a single EU wide patent.

The patent is granted on the same terms in relation to patentability as are provided by the Munich Convention. The application is made under the Munich Convention. The European Patent Office examines the application and publishes it. It is registered in the register of European Patents.

The European Patent confers the same rights as national patents, including in particular the right to prohibit without consent the direct use, making, offering, marketing, or importing of patented products. Similar protections would exist in respect of indirect use.

European Patents are licensable on an exclusive or non-exclusive way in the same manner as national patents. The Commission may grant compulsory licenses if there is a lack of or insufficient exploitation of the patent. It may also grant use of the patent in times of crisis or urgency or where it is necessary to remedy factors which have been determined to be anticompetitive.

The European Patent is valid for 20 years from the date of filing. It may lapse if renewal fees are not paid. The patent may be invalid on the following basis;

• not patentable in accordance with the Munich Convention
• does not disclose an invention in a sufficiently clear and complete manner to be carried out by a person skilled in the art.
• the subject matter of the patent extends beyond the content of the application as filed.

Invalidation would be retrospective, provided this would not affect the validity of contracts concluded prior to the decision as to invalidity.

EU Patent Court

The Convention establishes a common court for the settlement of disputes relating to European patents and European patents with unitary effect (i.e. European patents that are granted based on a single application and which protect an invention in all countries in which the agreement applies).

The Unified Patent Court (UPC) Agreement applies to:

• European patents with unitary effect;
• supplementary protection certificates issued for products protected by a patent;
• European patents which have not yet lapsed at the date of entry or were granted after that date;
• European patent applications which are pending at the date of entry into force of this agreement or which are filed after that date.

The agreement is open to for any EU country to join.

Location and structure

The UPC consists of a Court of First Instance (CFI), a Court of Appeal and a Registry. The CFI will have central, regional and local divisions. The central division will be based in Paris with sections in London and Munich.

The Court of Appeal will be based in Luxembourg along with the Registry.

A 7-year transitional period will come into effect once the agreement has come into force. This may be extended for a further 7 years by a decision of the Administrative Committee.

During this transitional period:

• an action for infringement or for revocation of a European patent (but not for a European patent with unitary effect) may still be brought before a national court or other competent national authority;
• an action for infringement or for a declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may also be brought before a national court or other competent national authority;

the holder of, or applicant for, a European patent or the holder of a supplementary protection certificate may opt out from the exclusive competence of the court, by notifying their opt-out to the Registry at the latest one month before the end of the transitional period.

Judges

Judges are appointed by the Administrative Committee. Some will be legally qualified; others technically qualified.

The pool of judges selected must include at least one technical judge for each field of technology.

The judges will be allocated to divisions by the President of the CFI where required by the agreement or the attached statute. This could be, for instance, at the request of a local or regional division in the case of a counterclaim for revocation of a patent.

No judge may hold any other occupation whether paid or unpaid. They may, however, hold judicial functions at the national level.

The UPC will base its decisions on:

• EU law including Regulations (EU) 1257/2012 and (EU) 1260/2012;
• the UPC agreement;
• the Convention on the Grant of European Patents (EPC);
• other international agreements applicable to patents and binding on all the contracting EU countries; and
• national law.

Competence

The UPC will have exclusive competence on a number of issues including actions for:

• actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
• provisional and protective measures and injunctions;
• revocation of patents; and
• declaration of invalidity of supplementary protection certificates.

It is proposed to form a centralized Community intellectual property court to guarantee unity and consistent case law. There would be chambers of first instance and appeals. It would have exclusive jurisdiction for some actions including disputes relating to infringement and validity of European Patents.

The court would have the power to impose sanctions if the patent has been infringed. This would include an order prohibiting continued infringement, seizing products resulting from the infringement, seizing goods and materials which enable the invention to be used.

National courts would have jurisdiction in areas which are not within the exclusive jurisdiction of the Court of Justice or the Community intellectual property court.

Patents must be granted in accordance with the convention The language of the proceedings before the office which is either English, German, or French. They must be published in the language with a translation into two other languages (Italian and Spanish). Translation to all community languages is not necessary. The proprietor of the patent has the option of producing and depositing translations of the patent in other languages of the state.