GERMANY: An Introduction to Intellectual Property: Patent Prosecution

The Unitary Patent and The Unified Patent Court 

With the continuous harmonisation of the European market, efforts have been made for a long time to also provide a tool for patents which accounts for that Europeanisation. After several years of planning, a “unitary patent system” will finally be introduced in Europe in the foreseeable future. The unitary patent system will enable the obtaining of a unitary patent (UP) - also called a “European patent with unitary effect”, on the one hand, and will establish a Unified Patent Court (UPC) on the other.

The unitary patent 

Contrary to popular understanding, a unitary patent does not provide protection in all EU member states. Rather, the unitary patent confers protection only for those EU member states participating in the Agreement on a Unified Patent Court (UPCA) at the time the unitary effect is sought. These participating member states are hereinafter also referred to as the UPCA member states.

The unitary protection provided by the unitary patent will initially apply in 17 EU member states. Further EU member states are expected to ratify the UPCA in the foreseeable future, so that the effect of the unitary patent can also be obtained in these states in the future. At present, however, some EU member states, such as Spain, Poland and Croatia, have declared that they will not participate in the unitary patent system. A unitary patent is intended to enable patent owners to obtain unitary patent protection in up to 24 EU member states after the grant of a European patent (EP). The unitary patent (UP) is thus a European patent (EP) granted by the European Patent Office (EPO), according to the rules and procedure of the European Patent Convention (EPC), for which, after grant, unitary effect is granted upon request for the territory of the UPCA member states.

The unitary patent may coexist with a classical European patent, also known as a bundle patent. This is particularly important for European patents which are also intended to be valid in non-EU member states (such as Switzerland or the United Kingdom) or non-UPCA member states (such as Spain).

The special feature of the unitary patent is its unitary character. Accordingly, the unitary patent can be centrally enforced or cancelled in all UPCA member states. Furthermore, the unitary patent can be limited or transferred for all UPCA member states.

A possible advantage of the unitary patent is that the costs for translations are lower compared to the translation costs for the validation of a conventional European patent in a certain number of countries. In addition, there is only one common renewal fee for a unitary patent, which is lower compared to the renewal fees for a traditional European patent - at least in a certain number of validation countries.

It should be noted that the unitary effect of the unitary patent only applies to those states which are UPCA member states at the time of grant of the European patent. Thus, the effect of the unitary patent cannot be subsequently extended to states which accede to the UPCA at a later date.

The Unified Patent Court  

The Unified Patent Court (UPC) will be an international court with exclusive jurisdiction over litigation concerning unitary patents and its own rules of procedure.

A unified court opens up the possibility of conducting corresponding proceedings in a timely and cost-effective manner. In particular, it eliminates the need for parallel proceedings in the individual participating UPCA member states, which can result in significant cost savings.

In principle, the UPC shall have exclusive jurisdiction in the UPCA member states for litigation concerning unitary patents, European patents, as well as supplementary protection certificates. The UPC will not have jurisdiction over national patents.

For a transitional period of currently seven years, European patents and supplementary protection certificates can be excluded from the exclusive jurisdiction of the UPC. This exclusion is referred to as an “opt-out”. A “sunrise period” is intended to give patentees the possibility to file their opt-out declaration three months before the UPCA enters into force. If an opt-out declaration is filed during the sunrise period, it will take effect on the date on which the UPCA enters into force. By using the sunrise period to file an opt-out declaration, it is possible to avoid a unitary nullity action being filed against a European patent on the first day the UPC starts its operation, which would exclude an opt-out for this European patent.

The UPC has a Court of First Instance and a Court of Appeal. The Court of First Instance is composed of a Central Division and several Local Divisions and Regional Divisions in individual UPCA member states. The Central Division has its seat in Paris and will have divisions in Munich and probably Milan. Of the current 12 Local Divisions, four Local Divisions are envisaged in Germany, namely in Düsseldorf, Mannheim, Munich and Hamburg (currently, the locations of the internationally-recognised infringement courts). The Court of Appeal has its seat in Luxembourg.

For infringement actions, the Local or Regional Division at the defendant's seat or at the place of actual or threatened patent infringement will be competent. If the defendant has no seat in one of the UPCA member states, or if there is no Local or Regional Division in the UPCA member state concerned, the Central Division may be competent. Furthermore, the Central Division is in principle competent for nullity actions as well as negative declaratory actions.

A decisive advantage of the UPC is that an injunction against an infringer for infringement of a unitary patent with effect for all UPCA member states can be obtained in a single court proceeding. In addition, infringement and nullity proceedings can be dealt with jointly by one panel of judges (eg, a Local Division). Depending on the individual case, however, it is also possible to decide on infringement and nullity of a patent in separate proceedings (so-called bifurcation).

The language of the first instance proceedings before the UPC will largely depend on which Local or Regional Division is utilised. However, individual UPCA member states may also allow one or more official languages of the EPO as language of proceedings in their respective divisions. For example, the Munich Local Division has already indicated that it would accept English as a further language of proceedings.

It remains to be seen, how the UPC will alter the patent litigation and nullity proceedings in Germany; in particular, whether the number of cases brought before the German courts will decrease and whether the case law of the UPC will have an effect on German proceedings.