Dipl.-Ing. Josef Bockhorni
The European patent just “ante portas”. As in December 2012, the European Parliament adopted the regulation on unitary patent protection, translation provisions and the Unified Patent Court and as the International Agreement on a Unified Patent Court was signed by all 25 participating member states on February 19, 2013, we can assume that most likely, the unitary European patent including the new unified court system will enter into force in the year 2015. The precondition is that at least 13 of the contracting member states and among these, compulsory Germany, France and Great Britain, ratify the European Agreement on the Unified Patent Court. Given the current situation, this cannot be expected before April 2014 and more probably only in 2015. When previously, reference was made to the Community Patent, it is now called Unitary Patent due to the fact that two main member states, i.e. Italy and Spain, do not participate due to the translation criteria.
The classical European patent will continue to exist in addition to the unitary patent and the granting procedure will also not change. It is up to the applicant to file a request for change of the classical European patent to a unitary patent. The request must be filed with the European Patent Office within one month after announcement of the grant of the European patent.
In case of a request for a unitary patent, an additional, complete translation must be provided, i.e. an English translation for the case that the European patent was granted in the German or French language or a German or French translation for the case that the European patent was granted in English language. The annual fees for the unitary patent are charged by the European Patent Office.
The Unified Patent Court is responsible for both the classical European patents as well as for the unitary patents. However, an opt-out of the classical European patents from the unified court system is possible for a transition time of seven years to a maximum of fourteen years with the participating countries of the agreement deciding on that individually.
The new court of first instance is decentralized and has a central chamber as well as a number of local and regional chambers, respectively.
The central chamber is located in Paris, Munich and London with Munich being responsible for the IPC section H, i.e. mechanical engineering and further sectors and London for the IPC sections A and C, i.e. chemistry and metallurgy.
Furthermore, there are local chambers in participating countries with a respective number of executed patent litigations and moreover regional chambers which, on request, can be established instead of local chambers for groups of countries. Regional chambers are particularly interesting for smaller countries which can join together for forming a regional chamber. According to our knowledge, the formation of a regional chamber is currently planned in Scandinavia (without Norway though).
In Germany, where 70% of all litigation disputes from European patents have been handled by specialized courts and where there is also a department of the central chamber of the unified court, there are expected to be four local chambers, probably in Munich, Dusseldorf, Mannheim and Hamburg.
The central chamber of the Unified Patent Court is in particular responsible for isolated invalidity actions and negative declaratory actions. For invalidity counter actions in case of infringement actions in particular, local and regional chambers are responsible.
Cancellation, limitation and transfer of the unitary patent are valid for all participating countries whereas licences can also be granted for a part of the participating countries.
Besides the court of first instance which is formed of the central chamber and local or regional chambers, there is a central Court of Appeal which will be based in Luxembourg. For the Unified Patent Court, there will be a so-called Pool of Judges. All legally and technically qualified judges of the court of first instance will be member of this Pool of Judges. For every technical sector, a technically qualified judge will furthermore be member of the Pool of Judges.
The local chambers will be manned with three legally qualified judges. On demand of a party or by determination of the chamber, a maximum of one technically qualified judge from the Pool of Judges can be called in.
In chambers with less than an average of 50 proceedings within three subsequent years, the Court will be compiled of one national and two international judges from the Pool of Judges. In Germany, the Court will have two national and one international judge and most of the time a technically qualified judge, too.
The central chamber disposes of two legally qualified judges, each from a different country and one technically qualified judge.
The Court of Appeal is compiled of three legally qualified judges from different countries and two technically qualified judges.
The German courts will still be of big importance in case of infringement actions from European patents due to the fact that four local chambers will be established, the central chamber in Munich will have one department and as a result of the opt-out of the Unified Patent Court within a transition time of at least seven years, all current local courts will remain responsible.
In general, local and regional chambers, respectively, are also responsible for infringement proceedings with invalidity actions at the place of infringement. There is an exclusive responsibility for the central chamber for invalidity actions without a pending infringement proceeding as well as for negative declaratory actions.
It is difficult to make a recommendation whether it is advisable to take the way of the unitary patent (community patent) or the way of the classical European patent. We think that at least for a transition time of several years, the classical European patent should be preferred before the unitary patent. The costs for national validations are omitted with the unitary patent, however, it is not very common that the European patent is validated in a large number of countries. Most European patents are validated in only up to three to six countries. As a complete translation of the European patent is necessary during a transition time of at least six years, there will probably be no big difference in costs in practice.
One thing that also has to be taken into account here is that the new court system does not have any practical experience and that there is also no jurisdiction at all which can be used as a basis. This may cause problems because the chambers of the Unified Court have judges from different countries with different languages and different experience and expertise. This may make the issue of proceedings unpredictable. As in particular in infringement proceedings the courts in different states assess quite differently, the question is currently open how the jurisdiction of the Unified Patent Court will develop. Furthermore, the Pool of Judges is compiled by means of the system of the proportional representation so that many judges in the Pool of Judges come from countries where there are hardly any infringement matters from European patents (about 70% of infringements proceedings from European patents are handled by German courts, partly in English language) so that the legal and professional quality and wealth of experience of the judges in the Pool of Judges might be quite different, to put it mildly. This may probably lead to hardly calculable results, at least in the first few years. Furthermore, in case of an invalidity action, an invalidity declaration will be affected centrally (central attack) which also represents an increased insecurity risk with a not yet solidified jurisdiction of the Unified Patent Court.
Under these circumstances, we cannot give our clients the general recommendation to immediately switch to the new system with the unitary patent, it will rather be practicable to wait at least a while until the whole matter has worked out and reliable experiences are available.
Author: Dipl.-Ing. Josef Bockhorni (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
