“Preparing for the Unitary Patent Package” (event review)

by María Victoria Rivas Llanos

On 4-5 December 2014, a conference on the hot topic of the Unitary Patent Package took place in the Old Hall of Lincoln’s Inn, in London. The conference was organised by the Academy of European Law (ERA) in cooperation with the Centre for Commercial Law Studies (CCLS), Queen Mary University of London. Professor Duncan Matthews (Chair in Intellectual Property Law at Queen Mary University of London, CCLS) and Florence Hartmann-Vareilles (Advocate and Head of the Section European Business Law at the Academy of European Law) chaired the conference.

Speakers included experts from the High Court, members of the European Patent Organisation and the European Patent Institute, law firms and companies specialising in Intellectual Property, as well as renowned university professors, making for rich discussion over the two days.

Thursday 4 December:

An introduction to the history of the Unitary European Patent by Mr. Justice Richard Arnold (Judge of the High Court of Justice, Chancery Division, London) opened the event.

It was followed by an overview and update of the work of the European Patent Organisation (EPOrg) Select Committee by Mr. Jérôme Debrulle (Head of the Belgium Intellectual Property Office and Chairman of the Select Committee of the EPOrg), who introduced the attendees to the main features of unitary patent protection, its institutional framework and the main decisions behind its implementation.

Professor Manuel Desantes (University of Alicante, Spain) presented Spain’s second legal challenge before the CJEU after the Opinion of the Advocate General Mr. Ives Bot in Case C-146/13 Spain v Parliament and Council. Professor Desantes underlined the inconsistency of the Opinion and noted that, although both a Unified Patent Court (UPC) and a European patent with unitary effect are certainly needed, it should be done on the foundations of a robust system. The unitary patent protection system is not robust enough in its current state, Desantes argued. In his view, the shortcomings are: the mix of EU and International Law procedures, the vague concept of “enhanced cooperation” in the Unitary Patent Regulation[1] and the presupposition of economical aspects.

Ms. Bettina Wanner (Bayer Intellectual Property GmbH, Monheim) talked about the need for clarification in relation to Supplementary Protection Certificates (SPCS) on unitary patents, currently based on the national laws of the Member States. Ms. Wanner noted several points that need to be clarified under the unitary patent system: first of all, which authorities (EPO, OHIM or National Patent Offices) will be responsible for granting SPCs; secondly, which Court will be competent for Appeals of SPCs (according to Art. 32. (a)-(d) of the UPC Agreement[2] the UPC will not be competent for this); and thirdly, what are the territorial[3] and material[4] scopes of the unitary patent.

Mr. Pierre Véron (member of the Drafting Committee on the Rules of Procedure for the UPC and Partner at Véron & Associés, Paris) presented the Unitary Patent as an object of property. Pursuant to Arts. 5(3) and 7(1) EC Regulation No. 1257/1012[5], “a European patent with unitary effect as an object of property shall be treated in its entirety and in all participating Member States as a national patent of the participating Member State in which that patent has unitary effect…”. Thus, the applicable law for ownership of unitary patents will be the Member States national law[6], the European Patent Convention EPC[7] and the UPC Agreement[8].

Mr. Kevin Mooney (partner at Simmons & Simmons LLP and Chairman of the drafting committee for the rules of procedure for the UPC) spoke about the procedural rules that will govern the actions of the new UPC. The 17th Draft of Rules of Procedure of the UPC[9] will be amended subsequent to the public consultation in Trier on 26 November 2014.

Ms. Vicky Salmon (solicitor and patent attorney at IP Asset LLP and chair of the CIPA Litigation Committee, London) and Mr. Tony Tangena (President of the European Patent Institute, Munich) focused on the rights of representation before the UPC. Ms. Salmon explained the rules on the European Patent Litigation Certificate (EPLC) and other appropriate qualifications[10]. Mr. Tangena strengthened the importance of the representation of a qualified patent attorney before the UPC.

Thursday 5 December

The second day started with a round table with Mr. Alan Johnson (partner at Bristows LLP and Chair of the AIPPI Committee on the UPC and Unitary Patent Package, London), Professor Maximilian Haedicke (member of the University of Freiburg and Judge at the High Regional Court of Düsseldorf, Germany) and Mr. David Musker (partner at RGC Jenkins & Co., London). Mr. Johnson explained the transitional provisions contemplated by Art. 83 UPCA.[11] Professor Haedicke focused on two relevant areas of patent litigation before the UPC: first, the problems of the bifurcation in the UPC-System in relation to German Courts and the Rule 40 (b) of the UPC Rules of Procedure[12], and secondly, the sources of law and competent Courts under the new system. Finally, Mr. Musker explained the rules that will govern revocation and opposition procedures before the UPC and the stakeholders that might benefit the most from the outcome of these procedures.

Mr. Samuel Granata (Judge at the Commercial Court of Antwerp, Belgium) explained how actions for damages[13] and the execution of decisions[14] will be processed before the UPC.

Mr. Gleert Glas (partner at Allen&Overy, Brussels) gave a number of tips to conclude good patent settlement agreements, particularly regarding the pharmaceutical sector (e.g., “pay for delay” or “reverse payment” settlements). He also explained the effects of the revised Technology Transfer Block Exemption Regulation (TTBER)[15] on Competition Law.

Mr. Neil Feinson (Director of the International Policy Department UKIPO, London) presented the possible challenges and prospects for the future within the European patent protection system.

All in all, it was a full two days of discussion and debate at a time when so many changes are going on and questions are unanswered. The quality of the speeches from well-known personalities in the world of Intellectual Property gave the attendees an in-depth view on the current issues surrounding the thrilling project of the Unitary Patent Package.

Maria Victoria Rivas Llanos
QMJIP Associate Editor

[1] Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of the unitary patent protection (Unitary Patent Regulation).

[2] Agreement on a Unified Patent Court (UPC Agreement, 2013/C 175/01); signed on 19 February 2013.

[3] EC Regulation No.1257/2012 (n.1), Art. 5. 2

[4] Regulation (EU) No. 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplemantary protection certificate for plant protection products, Art. 5. Regulation (EU) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medical products, Art. 5.

[5] EC Regulation (n.1).

[6] ibis., Art. 7.

[7] Convention on the Grant of European Patents of 5 October 1973, European Patent Convention (EPC); Arts. 60 and 74.

[8] UPC Agreement (n. 2), Art. 32 (1) and (2) and Art. 47.

[9] 17th Draft of Rules of Procedure of the Unified Patent Court of 31 October 2014

[10] Draft Decision of the Administrative Committee on the Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications pursuant to Article 48 (2) of the Agreement on a Unified Patent Court.

[11] UPC Agreement (n.2).

[12] 17th Draft (n.10).

[13] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Art. 13; UPC Agreement (n.2), Art 68; Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, Art. 4 (4).

[14] UPC Agreement (n.2), Arts. 31 and 89 (1); Regulation (EU) No. 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No. 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice, Art. 71; Rules of Procedure UPC (n.9), Rule 118.9.

[15] Regulation (EU) No. 316/2014 of the European Commission of 21 March 2014

on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements.