Before the Unitary Patent Package can take effect there are various legal obstacles that need to be cleared. Some decisions are still to be made (the scale of fees being one that IPCcopy is particularly keen to hear about), and some legal hoops are still to be jumped (ratification, and amendment to the Brussels I Regulation being the most significant).
So, what remains to be dealt with before the first unitary patent can be granted, and when can we realistically expect the way to be cleared?
Here, IPCopy breaks down the procedures that remain, and takes a look at the word on the street regarding the likely processes and timescales for each.
Amendment to Brussels I
Fellow IP bloggers ksnh and IPKat, have previously expressed the view that in order for the Unified Patent Court to be given jurisdiction over Unitary Patents, Regulation No 1215/2012, on the jurisdiction and enforcement of judgments across the EU (‘the Brussels I Regulation’), would require recasting to account for the provisions of the Unified Patent Agreement. Such a recast would need to be approved before the unitary patent could take effect.
At a CIPA webinar on 15 March 2013, the speakers confirmed that, in their view, a recasting of Brussels I would definitely be necessary, and that the wheels are already in motion to hurry this recast through. The view expressed was that while this recast must be passed in order to bring the Unitary Patent Package into effect, no problems are foreseen, and the expectation is that this amendment will pass with relative ease and haste, and will not be the rate-determining step in getting the system to go live. [Update] IPCopy notes with interest that an alternative view point is also to be found:, and Manuel Descantes explains here why he believes an amendment is unnecessary.[/Update]
Whether or not the amendment is needed, the take-home message does seem to be that this is unlikely to be the fly in the ointment that some have anticipated
Ratification of the Agreement
The more likely rate-determining step is ratification of the Agreement on the Unified Patent Court. Assuming this is the limiting factor, the unitary patent regulation will come into effect on the first day of the fourth month after the Agreement has been ratified by Germany, France, the UK and ten of the other countries that are signatories to the Agreement on the Unified Patent Court. (We are assuming here that the other time period specified, 1 January 2014, is way too ambitious.)
So what exactly is ‘ratification’? In short, ratification is a country’s formal expression of consent to be bound by an Agreement or Treaty to which it is a signatory. To ratify, each country deposits its ‘Instrument of Ratification’ with the depository of the Agreement.
Each country will have its own procedures to go through before ratification can be completed. In the UK, the usual process would involve laying the Agreement before parliament for 21 sitting days, accompanied by an Explanatory Memorandum. Both houses would then have an opportunity to resolve that the Agreement should not be ratified should they so wish. It is not currently clear whether or not the Agreement on the Unified Patent Court will need to go through this procedure in the UK, and as far as IPCopy is aware, officials have quietly ducked any questions so far as to what exactly will be involved in the UK’s ratification process.
There has been much speculation as to how long ratification might take, and whether factors such as the 2013 elections in Germany, and the talk of an in-out referendum in the UK might potentially delay fulfillment of the ratification requirements. It seems, however, that there is a genuine determination among the participating countries to see ratification through as quickly as possible, and it seems that the ratification requirements will be met before the end of 2014, ready for the first unitary patent to be granted in 2015.
An observation from IPCopy: The number of countries that have ratified the Agreement at the time the unitary patent comes into force could have a significant impact on the initial success of the unitary patent. Ratification by 13 countries will kick-start the countdown to the start of the unitary patent, but there will be at least a three-month window in which further countries might ratify in time for the launch. We would venture so far as to suggest that if a significant majority of the participating countries have ratified in time for the big day, the process will be simpler to negotiate from the beginning, and initial uptake might be significantly greater. This could be important in setting the tone for perceptions of the unitary patent in the future.
The fees associated with the unitary patent are yet to be set, and are awaited with baited breath by all concerned. Most parties agree that these fees will be a key factor in the success or otherwise of the unitary patent.
The renewal fees in particular will be significant. Under the current European patent system, as a patent matures and renewal fees increase, it is common for a patentee to manage costs by dropping patents in less commercially important countries. A fundamental premise of the unitary patent is that it must stand or fall in all countries together, and this means that the full renewal fee will need to be paid each year to maintain the patent in force. This means that it will not be possible to ‘thin out’ the portfolio over time by allowing some countries to drop.
The committee that will decide fees has its first meeting on 20 March 2013, and IPCopy will be looking out for any news. Rumours so far are that there will be reduced renewal fees for SMEs (a system similar to the US system for small and large entities), and that renewal fees will ramp up significantly later in the life of the patent.
Rules of Procedure
Before the Unitary Patent comes into force, the Rules of Procedure of the Unified Patent Court need to be finalised and approved. The hope is that the Rules of Procedure will help to iron out some of the bumps in the Agreement and the Regulation. For example, industry bodies are hoping for clarification as to what the opt-out provisions really mean by ‘exclusive competence’ of the UPC, and that the Rules will allow for a ‘sun-rise period’ for opting existing patents out of the UPC.
Rumours abound as to when and how the Rules will be finalised, and what will be involved. We know that the Preparatory Committee responsible for agreeing the Rules will hold its first meeting on 26 March 2013. Certainly there will be a public consultation process. Ksnh reported from the joint GRUR/JIPLP seminar on 6 March that Professor Tilman had indicated that the public consultation will be a short process lasting a matter of weeks, potentially to take place in April 2013. Comments at the recent CIPA seminar of 15 March contradicted this, indicating a (slightly) lengthier consultation process, and possible public readings in the autumn.
For now, then, the details remain unclear.
The most-recently leaked draft of the Rules of Procedure (the fourteenth draft) is available to see here. The official committee that is finalising the Rules is due to meet on 26 March 2013, and we will be keeping an ear to the ground.
An aside: Amendment to the UK Patents Act
Although not necessary for the Unitary Patent Package to come into effect, it has already been confirmed that amendments to the UK Patents Act will be required, and that the UKIPO is preparing this.
Emily Weal 20 March 2013