Back in December last year IPcopy started to take a look back at the unitary patent package and where we are in delivering this new unitary patent system. Our first “Where are we now?” post provided an overview of the Unified Patent Court itself. This entry asks what progress has there been on the road to getting the system up and running. Remember that although the original implementation date (end of 2014) was missed there has been some significant progress in delivering the new system.

WHAT PROGRESS HAS THERE BEEN?

Q: When will the unitary patent system come into effect?

The current official start date is late 2015. At a recent conference, Neil Feinson of the UKIPO stated that he thought that this date was achievable though there may be a period of a few months between the various agreements coming into effect and the Unified Patent Court actually opening its doors for business. So, sometime during 2016 seems to be the best guess at present!

Q: Who has completed their ratification processes?

For the unitary patent system to come into effect we require thirteen states to complete their ratification of the Unified Patent Court (UPC) Agreement and to deposit their instruments of ratification in Brussels. Currently, six states have fully ratified – Austria, France, Belgium, Sweden, Denmark and Malta.

Progress is being made in a number of other countries. Ratification may be delayed in a number of territories however until the various fees associated with the system are known.

Out of the thirteen states that are needed to bring the unitary patent system into effect it is a requirement that France, Germany and the UK ratify. France of course has already done so, but what of the other “big two”?

Q: Where has the UK got to?

The UK has passed the Intellectual Property Act 2014 and is working on secondary legislation that will enable us to ratify the UPC Agreement. The original plan was to ratify the Agreement before the 2015 General Election but this now looks a little unlikely and the target for getting the required secondary legislation in place is before the end of 2015. Even once the UK has ratified the UPC Agreement we will need to deposit that instrument of ratification in Brussels.

Q: Where has Germany got to?

German progress on ratification has been held up by their elections this year. Additionally, a recent article online highlighted that the process may take longer than previously thought and is expected to extend through 2015. The lack of information on the court fees, renewal fees etc. may also delay German ratification further.

Q: So when will we know about the Renewal fees?

Summer 2015, maybe. The publication of the renewal fee amounts has always seemed to be just around the corner. However, each time we think we are getting close the date seems to get put back. The latest news we heard (during last summer) was by the middle of 2015. The same conference that provided this news also gave the following assessment of the actual fee level “higher than you had hoped but lower than you’d feared.”

Q: Where have we got to on the court fees?

The Rules of Procedure contain a list of fees that will apply to the new Court but no actual fee amounts. A public consultation is expected shortly on the issue of Court fees.

Q: What local/regional divisions are to be set up?

A Nordic regional division of the UPC is to be set up covering Sweden, Lithuania, Latvia and Estonia. Presumably we can therefore expect Lithuania, Latvia and Estonia to ratify the UPC Agreement in due course.

The UK is looking for a location for its Court offices. The UK will have part of the central division and is expected to have at least one local division. Germany will have four local divisions (in Mannheim, Düsseldorf , Hamburg and Munich – see here) .

The full current position on where local and regional divisions are expected is noted below (along with the language that each division is intending to support in brackets). Countries that have either expressed no opinion on the issue or who are not expected to have/participate in a local/regional division are noted in “The Others” section.

Local divisions (with languages in brackets)

UK (English)*; France (French and English); Germany (German and English); Holland (Dutch and English); Italy (Italian); Belgium (Dutch, French, German and English), Finland (Finnish, Swedish and English), Denmark (Danish and English), Ireland (English)

*[There are calls for a local division to be set up in Edinburgh as well]

Regional Divisions (with languages in brackets):

• Nordic regional division Sweden, Lithuania, Latvia and Estonia (English)
• Romania, Bulgaria, Cyprus and Greece (local, official. Languages, French, English)
• Czech Republic and Slovakia (local, official, languages, English)

“The Others”

IPcopy understands that neither Malta nor Luxembourg are currently contemplating setting up a local division or joining one of the proposed regional divisions. For these two territories therefore jurisdiction will pass back to the central division (Paris, London or Munich depending on the subject matter in question) and the language of proceedings will be the language of grant of the patent.

A number of countries have expressed no decision one way or another. These countries include: Portugal, Austria, Slovenia and Hungary.

Q: What risks are there that the process could get derailed?

Failure to secure thirteen ratifying states (including France, Germany and the UK) would prevent the system from going live. Additionally, we could secure ratification from 20 states but until the UK and Germany complete their processes the system will remain dormant. It is important therefore that all states continue to work through their necessary national procedures. It seems likely that information on the Court fees will be crucial in allowing a number of states, possibly including Germany, to formally complete their national ratification procedures.

The other fly in the ointment, at least for now, is the legal challenge from Spain against the whole system. The Advocate General’s opinion was delivered in mid November 2014 and recommended that the two Spanish challenges against the unitary patent system should be dismissed. It would, to put it mildly, be a surprise if the CJEU did not follow the AG’s opinion. However, until the CJEU decision is known (this is expected early this year) there will be the potential threat that the unitary patent system (the two unitary patent regulations and the Unified Patent Court agreement) may need some tweaking or in the worse case scenario may need to be sent back to the drawing board!

Further instalments of this post will cover: the unitary patent, and what actions can be taken now in preparation for the start of the UP system.

Further articles on the unitary patent system can be found on IPcopy’s dedicated Unitary Patent Package page.

Mark Richardson 15 January 2015