Legal Alert: Update on EU Unitary Patent and Unified Patent Court Developments, 01/2016

Good progress is being made toward the first grant of EU Unitary Patents (UPs) and the opening of the Unified Patent Court (UPC). In particular, several important steps were taken in the last quarter of 2015 and activity increased in the last ten days, following the holidays. Currently, the best estimate of the start date is in early 2017.

On October 1, 2015 a Protocol to the Unified Patent Court Agreement (UPCA) was signed, which will permit some parts of the UPCA to be applied during a transitional period of approximately three to four months from the day after the UPCA reaches minimum ratification until the UPCA enters into full force and the court opens. That will permit organizational activities, including the recruitment of judges, testing of IT systems, and early registration of opt-out demands. Later in October, the UPC Preparatory Committee agreed on the Rules of Procedure. The Rules are subject to future amendments setting the court fees and final approval by the UPC itself, when it is established.

EPO President Battistelli has announced that the EPO is now ready to begin granting Unitary Patents when the UPCA comes into force. The UP Select Committee met on December 15, 2015 and completed the final steps necessary to implement the UP, including adoption of (1) Rules relating to Unitary Patent Protection, (2) Rules relating to Fees for Unitary Patent Protection, (3) Rules relating to the distribution of fees amongst the participating Member States, and (4) Budgetary and Financial Rules. Most importantly, the Rules relating to Fees formally adopt the “True TOP 4” schedule, which provides fee levels generally corresponding to the sum of the renewal fees that now have to be paid for France, Germany, Netherlands, and the United Kingdom. (See our Costs page for more information).

Looking ahead, the UPC Preparatory Committee is aiming to complete its work by June 2016. After that, when the minimum ratification requirements are met, the transitional measures for organizing the new court will proceed as permitted by the Protocol.

The next big step for the UPC will be selection of judges. Approximately 1,300 persons have indicated an interest, including many highly qualified judges, attorneys-at-law and patent attorneys. The Preparatory Committee is expected to adopt a selection procedure at their meeting on February 24-25, 2016 and begin the process immediately thereafter.

After months with no formal progress toward ratification, Finland became the ninth state to deposit its ratification on January 19, 2016. Eight participating states, including France, had previously ratified. Additional ratifications by Germany, the United Kingdom, and three other states are required to start the start-up procedures envisioned by the Protocol and the period of approximately three to four months until opening of the UPC and grant of UPs begins. One complication, which may be delaying some ratifications, is that revisions of some national laws are required. For example, many of the judicial positions will be part-time, but current laws in some of the participating states do not permit their judges to do other work. Good news from the UK is that they have completed consultations on implementing legislation, and have published reports and draft legislation.

Fish will continue to provide you with information about UP and UPC developments, and has very recently updated the information on its UP & UPC webpages. Please visit www.fr.com/global/unitary-patent for more information.