Long-awaited EU unitary patent possible within 2 years as prospects brighten

IP|Business is supported by Foley & Lardner LLP 

European Council approval of the essential elements of the European Commission’s proposals for a unitary patent could be the breakthrough needed to allow for a unitary patent in the next 1-2 years. The European Patent Office (EPO) would examine and grant the unitary patent. Developing a unitary patent litigation system will likely take more time.

Previous attempts to create a unitary patent protection

The attempts to create a unitary patent date back to the early 2000’s, after several studies and reports showed that the lack of a unitary title and the absence of a unified patent litigation system had rendered access to the patent system costly and complex. However, negotiations stalled shortly after that and were only restarted in 2007, with a new proposal for an EU Patent Regulation.

The proposal was reformulated in 2009, after the entry into force of the Lisbon Treaty. According to article 118 of the treaty, the creation of European intellectual property (IP) rights follows the co-decision procedure, in which the European Parliament must vote on the Commission’s proposal, and the Council votes by qualified majority. However, any language arrangements for European IP rights require unanimity in the Council and only the consultation of the European Parliament.

Even though a general approach was agreed in late 2009, between the EU ministers, regarding the creation of the EU patent, the translation arrangements remained out of the scope of the agreement. In light of this, several Member States showed interest in establishing an enhanced cooperation between themselves.

Enhanced cooperation

The instrument of enhanced cooperation allows those countries of the EU that wish to continue to work together more closely to do so, while respecting the single institutional framework of the Union.

In order to establish enhanced cooperation in the field of patents, twelve Member States addressed a request to the Commission, which presented a proposal for an authorization decision to the Council on December 14, 2010. Soon after, all the remaining Member States, with the exception of Spain and Italy, requested to join the enhanced cooperation. After obtaining the consent of the European Parliament, the Council decided, on March 10, 2011, to authorize the Member States to pursue the enhanced cooperation.

The Commission presented to the Council, in April 2011, detailed proposals for implementing measures: one on the substantive provisions applicable to the unitary patent, and another on the translation arrangements. On June 27, the Council agreed on the essential elements of both Regulations, pending the opinion of the European Parliament.

This was a very important step forward, particularly as the agreement also covered the translation arrangements. It is now possible that a final political agreement could be reached by the end of 2011. That would allow for the unitary patent to be a reality within the next two years.

Unitary Patent

Patent protection in the EU can currently be obtained either by applying for patent protection separately in each Member State, or by applying to the European Patent Office (EPO) for a European Patent.

Under the national patent systems, an application must be filed at each relevant Member State’s national patent office under the relevant national law. While, in practice, several international conventions have harmonized the national patent laws, there are still some remaining differences, the more notable one being the filing language which is usually the official language of each Member State.

Alternatively, to obtain a European Patent, applicants must file a single application with the EPO, which determines the patentability of the invention and issues the patent. The application can be filed in the official language of any EPC contracting state, but prosecution is done in one of the three official languages of the EPO (English, French or German). However, the European Patent is not a unitary title, but rather a “bundle” of independent, nationally-enforceable, nationally-revocable patents which only has effect in the Member States designated in the application, and only after the applicant has taken the necessary steps in each designated country to “validate” the patent.

The draft Regulation creating unitary patent protection proposes to establish the unitary patent as a specific category of a European patent, granted by the EPO. Consequently, there will only be one single procedure (the one currently used in the EPO) for granting the European patent, and applicants will be able to choose, post grant, to give their European patent unitary effect in all 25 participating Member States.

Unified Patent Litigation System

Alongside the creation of a unitary patent in the EU, and perhaps of even greater importance for the competitiveness of the EU, is the need to have a unified patent litigation system. Currently, where the holder of a European Patent wishes to pursue a patent infringement action, it may have to go before the courts of the different Member States where the patent was validated and be subject to diverse national laws and procedures. This system increases the risk of contradicting court decisions and legal insecurity.

In order to remedy these issues, the European Commission proposed, in 2009, to create a unified patent litigation system, by an international agreement between the EU, its Member States and the other contracting states of the EPC. This system would have the advantage of creating a single, integrated jurisdictional structure to deal with litigation both on existing European patents and the future unitary patent. The decisions of the court would have effect on the whole territory of the EU and the territory of the contracting states of the EPC for which the European patent has taken effect (in case of litigation involving the European patent without unitary effect).

The Commission decided, in June 2009, to request an opinion from the Court of Justice on the compatibility of the envisaged agreement with the EU Treaty. In March 2011, the Court of Justice concluded that the agreement was not compatible with the EU Treaty. The Commission will soon propose new specific jurisdictional arrangements that would be compatible with the Treaty. However, in order to comply with the Opinion of the Court of Justice, it is likely the new court structure will only have jurisdiction on the EU territory and will not cover non-EU contracting states of the EPO.