EU Patent Is Dead! Long Live "European Patent With U...

Article 12

Implementation by the participating Member States

1. The participating Member States shall give, within the meaning of Article 143 of the EPC, the European Patent Office the following tasks to be carried out in conformity with the internal rules of the European Patent Office:

(a) the administration of requests for unitary effect by proprietors of European patents;

(b) the inclusion and administration of a Register for unitary patent protection registering unitary effect as well as any limitation, license, transfer, revocation or lapse of a European patent with unitary effect, within the European Patent Register;

(c) receiving and registering statements on licensing referred to in Article 11, their withdrawal and licensing commitments undertaken in international standardisation bodies;

(d) the publication of the translations referred to in Article 6 of Council Regulation …/… [translation arrangements] during the transitional period referred to in that Article;

(e) the collection and administration of renewal fees for European patents with unitary effect, in respect of the years following the year in which the Register referred to in point b) mentions their grant; the collection and administration of additional fees paid in cases of late payment of renewal fees within six months of the due date, as well as the distribution of a part of the collected renewal fees to the participating Member States; and

(f) the administration of a compensation scheme of translation costs for applicants filing European patent applications in one of the official languages of the Union that is not an official language of the European Patent Office.

For the purposes of point a), the participating Member States shall ensure that requests by the patent proprietor for unitary effect for a European patent are filed in the language of the proceedings as defined in Article 14(3) of the EPC no later than one month after the mention of the grant is published in the European Patent Bulletin.

For the purposes of point b), the participating Member States shall ensure that the unitary effect is indicated in the Register for unitary patent protection, where a request for unitary effect has been filed and, during the transitional period provided for in Article 6 of Council Regulation …/… [translation arrangements], has been submitted together with the translations referred to in that Article; and that the European Patent Office is informed of limitations and revocations of European patents with unitary effect.

2. In their capacity as Contracting States to the EPC, the participating Member States shall ensure the governance and supervision of the activities related to the tasks referred to in paragraph 1 by the European Patent Office. To that end they shall set up a Select Committee of the Administrative Council of the European Patent Organisation within the meaning of Article 145 of the EPC.

3. The participating Member States shall ensure effective legal protection before a national court against the decisions of the European Patent Office in carrying out the tasks referred to in paragraph 1.

The new scheme is explicit insofar as it says that the Regulation constitutes a special agreement within the meaning of Article 142 of the Convention on the Grant of European Patents (European Patent Convention, EPC). Article 142 EPC says that any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States. Technically this unitary appears to be technically implemented by some sort of a legal clamp bracing together formerly national parts of a European patent, i.e. the new flag which indicates unitary effect. In order to make this workable, the Regulation defined the effects of a European patent with unitary effect:

• Article 6: Right to prevent the direct use of the invention
• Article 7: Right to prevent the indirect use of the invention
• Article 8: Limitation of the effects of the European patent with unitary effect
• Article 9: Exhaustion of the rights conferred by the European patent with unitary effect

Licenses of right are also provided in Article 11.

However, a crucial point will be the enforcement of such European patent with unitary effect. The Regulation is silent on that but promises further work to tackle this problem:

"The creation of unitary patent protection has to be accompanied by appropriate jurisdictional arrangements responding to the needs of the users of the patent system. In order for the unitary patent protection to work properly in practice, appropriate jurisdictional arrangements should allow for patents to be enforced or revoked throughout the territory of the participating Member States and at the same time should ensure high quality judgements and legal security for companies. Specific jurisdictional arrangements will be proposed as soon as possible, taking also into account the recent opinion of the Court of Justice of the European Union (A- 1/09) on the compatibility of the draft agreement on the European and EU Patents Court with the Treaties."

Well, ... then, we shall wait and see. Obviously the EU is no longer set to become a party to the European Patent Convention (EPC). This means that Italy and Spain, by subbornly rejecting any workable compromise in the languages issue, not only have killed the project of a full EU patent but they effectively also have blocked the integration of the European Patent Organisation into the system of EU institutions. If, as planned under the old proposals, the EU formally would have joined the EPC it would have got a de-facto leadership role not only in the Administrative Council of the EPO but also in any future Diplomatic Conference reforming the EPC. Now they will be linked by a Secect Committe and, perhaps, by good will of the participating Member States.