Update on EU Unitary Patent and Unified Patent Court Developments - September 2015

Co-authored by: Herbert Kunz

Preparations for the grant of UPs and the opening of the UPC are moving steadily ahead; however, the complexities of organizing a new court system and creating the necessary physical and IT infrastructures in at least 13 members states have delayed the start date. The UPC Preparatory Committee is expected to announce a new target date in October. Currently, the best estimates are for a start date in late 2016 or early 2017.

The most interesting news is that Italy has asked to join the UP arrangement. A decision on Italy's request should be announced by November, maybe sooner. In August, it was rumored that Spain may also ask to join the UP and UPC, following adverse decisions in May by the Court of Justice of the European Union in the last two of Spain's four cases opposing the UP and UPC arrangements.

In June, the UP Select Committee of the EPO tentatively adopted a "True TOP4" renewal fee schedule. A final decision on the renewal fee schedule is expected in autumn 2015 and depends on agreement in the UP Select Committee on distribution of the member states' 50% share of the renewal fees. (See our Costs page).

One problem with the UPC Agreement is that the new court would not come into existence until the day it must begin accepting cases. The Preparatory Committee addressed this issue in a proposed Protocol on Provisional Application of parts of the UPC Agreement. The draft Protocol, now under review by the member states, would permit hiring of judges and staff, and would give owners of conventional European Patents the opportunity to file requests to opt-out of the UPC before the court opens. (The opt-out fee is now expected to be 80 Euros).

Significant progress has been made in ratifications of the UPC Agreement, which will trigger the start date for both the court and grant of UPs. Eight states have now ratified. Five more ratifications, including those of Germany and the UK, are necessary to begin operation of the UPC and UP systems. Many of the remaining 15 member states have announced plans and preparations for UPC divisions. The UK is preparing to ratify-it signed a lease in August on space for the London section of the UPC Central Division and a Local Division. There does not appear to be any doubt about German ratification; however, it is apparently being withheld to prevent reaching the minimum required ratifications before court preparations are completed.

Fish will continue to provide you with information about UP and UPC developments. Please visit www.fr.com/global/unitary-patent for more information.