The Unitary Patent and the Unitary Patent Court (UPC) are the building blocks of the Unitary Patent package which will supplement and strengthen the existing centralized European patent-granting and enforcement system. The aim of the system is to offer users a cost-effective option for patent protection and dispute settlement across the participating EU Member States.
It has been a long time since the EU regulations establishing the Unitary Patent System (No 1257/2012 and No 1260/2012) entered into force on 20 January 2013. Although the EU regulations entered into force in 2013, they will only apply as from the date of entry into force of the UPC Agreement, that is, on the first day of the fourth month following the deposit of the 13th instrument of ratification or accession (provided those of the three Member States in which the highest number of European patents had effect in 2012, i.e. Germany, France and Italy).
Different problems have arisen during these years one of the biggest being that the system has faced Brexit. The withdrawal of the United Kingdom from the UPC Agreement was finally deposited on 20 July 2020. The aforementioned withdrawal brought about various questions due to the fact that the United Kingdom was not only one of the three Member States in which the highest number of European patents had effect in 2012, the year preceding the year in which the signature of the UPC Agreement took place (Art. 89), but also because it was one the countries selected to host the Central Division of the UPC with responsibility for life sciences, chemistry and metallurgy cases which had to be located in London.
The first aspect referred to has been addressed and resolved by the Preparatory Committee by substituting United Kingdom with Italy, which was the fourth State Member in which the highest number of European patents had effect in 2012.
Still to be resolved is the replacement of the role of the United Kingdom and in particular, the designation of London as one of the three seats of the Court’s Central Division.
The provisional transfer of the seat’s functions from London to Paris and/or Munich, or its relocation to Milan, is being considered. The alternative of renegotiation and re-ratification could be complicated and could have the effect of bringing the fine-tuning of the system to a halt once again. However, changing the headquarters without changing the Agreement may cause some legal problems.
Another big problem for the system was the difficulties for Germany to approve the Protocol to the Agreement on a Unified Patent Court on Provisional Application. Initially, the German Bundesrat approved the Protocol on Provisional Application on 31 March 2017. However, the act on the ratification was immediately suspended as a result of a constitutional complaint filed with the German Federal Constitutional Court. On February 2020, the Court decision was issued, upholding the complaint and declaring the ratification act null and void on the grounds that it would have brought about a change in the basic law.
A revised draft bill for the Protocol on Provisional Application ratification was prepared by the German government. The ratification process in Germany was put forward and a new ratification bill was adopted by the German Parliament on 18 December 2020. However, the German ratification was put on hold again after the filing of two new complaints against the aforementioned Protocol before the Federal Constitutional Court.
In July 2021, the German Constitutional Court announced that it rejected the latest constitutional challenges. On 27 September 2021, the German government finally deposited the instrument of ratification for the Provisional Application Protocol.
As mentioned above, On 2 December 2021, the Austrian Parliament completed the ratification of the Protocol on Provisional Application. Once Austria deposits the ratification instrument it will become the 13th country to join the protocol on a European UPC on Provisional Application.
With the upcoming Austrian ratification, the UPC Preparatory Committee will be able to formally start its work. Although there is no timeline set for the initial provisional application stage, the Committee expects that stage to take approximately six to ten months. As stated in a on September 24, 2021, this stage includes the adoption of the secondary legislation of the UPC, including procedures, establishment of a budget, recruitment of judges and administrative staff, election of a president, final configuration and testing of the file management system and ensuring that all IT infrastructure is properly set up and secured.
When the final preparatory works for the UPC are completed during the period of provisional application, Germany is expected to take the final and decisive step by depositing its ratification instrument concerning the UPC Agreement. It will trigger a period of three to four months after which the UPC and the Unitary Patent System will go live. Currently the system is expected to be up and running working in the second half of 2022.
As the European Patent Office informs, “Unitary Patents may not cover all participating Member States as some of them may not yet have ratified the UPC Agreement when it enters into force. Outstanding ratifications are likely to take place successively, so there may be different generations of Unitary Patents with different territorial coverage. The coverage of a given generation of Unitary Patents will stay the same for their entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect. In other words, there will be no extension of the territorial coverage of Unitary Patents to other Member States which ratify the UPC Agreement after the registration of unitary effect by the EPO”.
As a final remark, two EU state members, Spain and Croatia are not party of the enhanced cooperation either of the Agreement on the Unitary Patent protection whilst Poland is a member of the enhanced cooperation but is not member of the Agreement on the Unitary Patent Court.
It remains to be seen how the member states of the UPC will deal with the open issues regarding the substitution of London with another city, or with different generations of Unitary Patents.