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The Unitary Patent Package: What obstacles remain? The latest facts and rumours.
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.
Unified Patent Court – Sunrise provision for Opt-out requests?
Wragge & Co held an excellent breakfast seminar yesterday (lovely bacon butties!) on the Unified Patent Court. The seminar provided a good overview of the unitary patent package as it stands today as well as highlighting outstanding issues and areas of interest.
One issue that was raised was the possibility of a “sunrise” provision being introduced to give patentees of nationally validated EP patents a protected period after the system goes live in which to register an opt out of the competence of the unified patent court.
Such a sunrise provision is being discussed because of the possibility of tactical revocation actions being brought by third parties against such nationally validated EP patents in order to fix those patents within the competence of the unified patent court before an opt out (from the UPC) has been filed by the patent proprietor.
Avoiding the unified patent court – Do our eyes deceive us? Answer: No!
In an earlier post – Avoiding the unified patent court – Do our eyes deceive us? – we asked whether the transitional provisions of the unified patent court agreement (see Article 83 of the final text [previously Article 58]) meant that an applicant could opt out of the competency of the unified patent court during the transitional period and that the opt-out would continue throughout the life of the patent.
Since the transitional periods are planned to run until at least either 1 January 2021 or 1 January 2028 this interpretation of the unified patent court agreement would mean that, for European patent applications filed prior to the end of the transitional period, national courts could still have competence to hear patent cases until the 2040s!
In a statement on 18 February 2013, the Commission clarified their position and confirmed that, as suspected in our earlier post, the opt-out will last for the life of the patent.
European Divisional Applications – EPO Consultation
Rule 36 EPC was amended in 2010 to introduce 24 month time limits for filing divisional European patent applications from a parent European patent application. One purpose of the rule amendment was to address the issue of precautionary divisional filings that were filed to avoid adverse decisions.
An online consultation, with a closing date of 5 April 2013, recently popped up on the EPO’s website (here) announcing that the EPO is going to take another look at Rule 36 EPC and the time limits for filing divisional applications.
UPC – The Ratification Game Update
As noted in an earlier post the agreement on the unified patent court (UPC) was signed by 24 member states on 19 February 2013.
Spain, Poland and Bulgaria were the three member states who did not sign the UPC agreement. Spain are sitting out of the unitary patent package completely at present and so have not signed. Poland and Bulgaria are part of the enhanced cooperation club that the unitary regulations have been prepared under. Poland, however, has decided to take a wait-and-see approach and so did not sign the UPC agreement. Bulgaria intends to sign as soon as it has made appropriate preparations.
In light of the UPC signing ceremony the Ratification Game post has been updated along with the football info-graphic. The full post can be found here but in the meantime here’s the updated graphic.
We want to be guinea pigs too
Following concerns that the strict patent infringement tests applied by the Courts in the UK are driving lucrative clinical trials overseas, the UK government has now concluded a review of the statute that would allow for a broader ‘Bolar’ exemption to enter UK law.
Power in Numbers – Trade Mark Squatters in China
Trade Mark squatting is big business in China and is becoming more and more common. The new target appears to be up and coming European brands. It would appear that as soon as a mark becomes the slightest bit known in the UK, throughout Europe or the US, the marks are being filed as trade mark applications in China by opportunistic third parties known as trade mark squatters.
It would also seem that these third parties are not just trying to reap the rewards of just one trade mark either. It is becoming more common for trade mark squatters (which are now large ‘squatting’ companies) to file hundreds of well-known or well-publicised up and coming brands belonging to foreign owners.
Are the days of a section 11(1) TMA defence numbered? (TMA – Trade Marks Act 1994)
“A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”(s.11(1)). This section of the UK Trade Marks Act 1994 (also referred to as “registered mark defence”) has generally been the basis for advising clients to obtain a UK trade mark registration in addition to a Community Trade Mark (‘CTM’) registration.
UK trade mark proprietors have been able to rely on the registered mark defence mentioned above as a prima facie defence to trade mark infringement proceedings. Prior to the EU decision below, the validity of a UK registered mark would have to be challenged first before infringement proceedings commenced. It would appear from the EUCJ ruling below that there may be a movement away from this defence.
Transitional provisions and the competence of the UPC: A response to Amerikat
Over at IPKat, Amerikat has been looking at the transitional provisions of the Unified Patent Court (UPC) Agreement and considering an interesting question. In this post, Amerikat has been considering Article 83, which gives a patentee the possibility to opt out of the ‘exclusive competence’ of the UPC if the patent was filed before the end of the transitional period, and to opt back in again at any time.
In brief, her question is this: does opting out of the ‘exclusive competence’ of the UPC still leave the UPC with non-exclusive competence, or does it leave the UPC with no competence at all (pun entirely unintentional)?
At IPCopy, we threw around some thoughts on this when we first noted quite how long the UK courts could still have competence as a result of Article 83 (Draft Article 58 back when we posted this), and we thought this was an opportunity to share them with you, and Amerikat! (more…)
IPcopy 