Disputes - What to look out for in 2019: The Unified Patent Court Arrives

2019 should finally see the arrival of the Unitary Patent and the Unified Patents Court, bringing a new option for patent protection in Europe.

In brief

  • 2019 should herald the introduction of the Unitary Patent and the Unified Patent Court (UPC) - a new unitary intellectual property right to supplement the existing centralised patent granting system in Europe and a new international court for resolution of patent disputes.
  • This is one of the most significant developments in IP dispute resolution in over 40 years, offering users a cost-effective means of protection for inventions and a one-stop shop for dispute resolution across Europe.
  • Launch is expected towards the end of 2019 but this depends on the decision of the German Federal Constitutional Court as to whether ratification of the UPC Agreement (which sets up the new system) is contrary to the German constitution.

The Unitary Patent

The Unitary Patent will make it possible for anyone (based in Europe or elsewhere) to obtain patent protection in up to 26 EU Member States by filing a single application to the European Patent Office (EPO).

Today, an inventor can protect an invention in Europe via one or more national patents or a European Patent. Under the current system, while users may file a single application at the EPO for a European Patent (thus offering costs savings against pursuing several national applications), once granted, a European Patent takes effect as a bundle of national rights which must be maintained and litigated separately. A Unitary Patent will be a single right providing uniform protection in all the countries in Europe taking part in the new system.

One downside of a unitary right is that, if challenged, its fate will depend on the decision of one court rather than a series of national courts. There will also no longer be the option of forum shopping that the current system allows as the UPC has exclusive jurisdiction. Many industry players (particularly in the life sciences sector) have been reticent about the introduction of the new system and have concerns about potential abuse by non-practising entities. So, the success of the Unitary Patent and the UPC will largely depend on the quality of its judges and the consistency of their decisions.

The Unified Patent Court

The UPC will be a new international court set up by 25 Member States to deal with enforcement and validity challenges of both Unitary Patents and European Patents. Its decisions will apply in all Member States that have ratified the UPC Agreement. This will end the need for parallel proceedings in different countries to enforce or invalidate patent rights across Europe. Litigation in several countries can be expensive and while patent law has largely been harmonised across Europe there is still a risk of inconsistent decisions under the current system due to procedural differences.

The UPC’s structure provides Local, Central and Regional divisions for first instance decisions and a central Appeal Court in Luxembourg. The UK was expected to be the home of a section of the Central division dealing with life sciences disputes. Since the UPC will not come into force before 29 March 2019, what happens to this section post-Brexit remains to be seen.

There will be legally and technically qualified judges in the UPC. The judges will sit on a multinational panel and must be nationals of a contracting Member State, have patent litigation experience and a good command of English, French or German.

The effect of Brexit

Although the UPC is not an EU institution, it is still open to negotiation whether the UK (and any UK judges) will be entitled to play a part in the UPC once it leaves the EU. There has been significant lobbying by industry and the IP professions to ensure the UK’s continued participation.

Simmons & Simmons has a special insight into the UPC. Kevin Mooney, a senior partner in the London IP practice, is the Chairman of the Drafting Committee for the Rules of Procedure which will apply to all disputes in the UPC. The Rules will also be an essential element in the training of judges of the UPC. Given his experience of the new system, Kevin was one of only 3 UK solicitors invited to give evidence to the House of Lords’ EU Justice Sub-Committee on the effect of Brexit on the Unitary Patent and the UPC. The discussion can be viewed here.

Whether the UK can participate in the system post Brexit is a political decision which will be addressed as part of the ongoing negotiations. The UK has ratified the UPC Agreement, but the system cannot come into force before Brexit (as Germany must still ratify the UPC Agreement before it goes ahead, assuming the German constitutional challenge fails).

What it means for you

  • More options for patent protection in Europe. Anyone seeking patent protection in more than three countries should consider applying for a Unitary Patent.
  • A simplified and more cost-effective means for enforcement of patent rights across several countries in Europe.
  • The creation of a unitary right means that patent owners can pursue infringers centrally and obtain cross-border relief (damages and injunctive relief) through a single set of court proceedings.
  • Hopefully more consistent decisions and greater legal certainty in patent cases across Europe.

This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.