A unitary patent package covering 25 member states
of the EU (Italy & Spain are not currently taking part) may finally be
realised after approval of a new EU patent regime by the EU parliament.  In
three separate voting sessions relating to a European unitary patent, a
language regime and a unified patent court, Members of the European parliament
(MEPs) approved the "EU patent package".

Long time
in the making

Negotiations relating to agreement on a European
unitary patent system have been on going for over 40 years with many false
dawns including the rejection, by the ECJ, of a previous intergovernmental
agreement proposal for a single European patent court.

The previous proposal was rejected by the ECJ who
ruled that such a proposal was illegal under the EU Treaty and that only a
unified patent system setup within the EU legislative framework would be legal.  The current package is by way of EU regulation for a unitary patent with the
court system the result of intergovernmental agreement albeit with EU
Commission support and blessing.  The
package was achieved by way of the so-called "enhanced co-operation"
procedure allowing a sub-set of member states to proceed with a project without
the other member states under certain conditions.

On 29th June 2012 the European council agreed on the
package but this was still to be approved by the European parliament.  The
European parliament has now approved the unitary patent, the unitary patents
court and an appropriate language regime.

Protection
conferred by Unitary Patent

The unitary patent will provide automatic unitary
patent protection in all 25 participating member states (Spain and Italy are
not included) in a move said to be directed at cutting costs for EU companies
and, hence, boosting competitiveness.  Of course, unitary patents and their
enforcement via the unified court is available for non-EU applicants as well
and it remains to be seen whether or not competitiveness of EU companies is
boosted by the new arrangements.

Court
Structure

The court will comprise a court of first instance,
which in turn comprises local or regional divisions and a central division, and
a court of appeal.

Each contracting state will have a local division
but there will be a regional division if a common division is preferred.  The
central division of the court of first instance will be based in Paris but with
sub-divisions in London (dealing with Pharmaceutical, Chemical and Human Necessities
subject-matter, IPC A & C) and Munich (dealing with Mechanical
subject-matter, IPC F).  Paris will conduct proceedings relating to all other
subject-matter.  The central division will have exclusive jurisdiction over
revocation actions which are brought separately from infringement actions.

The unified patents court will have jurisdiction
over all unitary patents established under the regulation.  Following a
transitional period of 7 years, the unified patents court will have jurisdiction
over all EP patents designating an EU member state a part of the unitary
package.  The transitional period may be extended following a review of the
workings of the new arrangements.  During the transitional period it is possible
for a European patent to be "opted out" of the unified system, and
indeed "opted in" if previously opted out.  However, requests to
exercise an option must be received by the registry of the unified court prior
to expiry of the transitional period.  In due course, patentees should give
consideration as to which of their European patents they wish to be in or out
of the system and make arrangements accordingly.

Local and regional divisions can choose whether or
not to hear infringement and validity actions together, or to adopt a so-called
bifurcated system in which validity is heard separately from the infringement
action.  In a bifurcated system, the validity issues will be heard by way of a
revocation action brought separately in the relevant central division.  If an
infringement action is started after a revocation action has been brought in
the central division then the revocation action may be moved to the court
having conduct of the infringement proceedings.

The unified patents court will not have
jurisdiction over national patents or national utility models.

How to
obtain a Unitary Patent

Any applicant will be able to apply to the EPO for
an EU unitary patent valid in all of the 25 member states taking part.  Applications are to be filed in English, French or German but can be made in
another language if a translation is provided.  Patents will be made available
in English, French and German.

Disputes

In case of a dispute, the patentee will have to provide
a full translation of the patent in question in an official language of the
member state in which the alleged infringement took place or the alleged
infringer is domiciled.  Damages are likely to take into account that prior to
being provided with a translation the alleged infringer may have acted in good
faith and did not have reasonable grounds to know they were infringing the
patent.  Whilst the jurisdictional issues are complex, they generally follow the
Brussels regulation, and a general rule of thumb is that an infringement action
can be brought before the court (local, regional or central) of the member
state in which the infringement took place or where the defendant has their
place of business within the EU.  Apparently, at the option of the plaintiff, non-EU
defendants may be sued in the relevant central division.

Cost

Within the language regime, provisions have been
made for translation costs to be reimbursed for EU-based SMEs, non-profit
organisations, universities and public research organisations.  Renewal fees are
also to be set at a level which takes into account the special needs of smaller
organisations.

The cost of filing a unitary patent is not yet
clear but is likely to be the same as validating in five or six countries under
the current EPO regime.

Comment

The unitary patent will provide protection in 25
member states for the cost of a single patent application and a translation
into two other languages.  Whilst this is beneficial to those organisations that
validate in many member states, the benefit to organisations that validate in
only two or three is not clear and this may be the case for many SMEs.

However, the EU parliament does appear to be taking
steps to reduce costs for smaller organisations such as SMEs and non-profit
organisations.  That said, until the cost of renewal or other official fees are
released for the unitary patent, it is still not clear how SMEs and non-profit
organisations are going to benefit.

Applicants should be asking themselves if the
unitary benefits of the system outweigh the risk throughout its life of losing
single European patent coverage by central revocation compared to the
flexibility and partitioned risk of revocation through seeking national
patents.

This
report comes from European Patent Attorneys at WP Thompson & Co., 55 Drury Lane,
London UK.  Further details and commentary can be obtained from Gill Smaggasgale,
a partner at the firm.