The winds of change appear to be sweeping across Europe, at least in relation to patent law. Currently a European patent is centrally examined and, once granted, splits into a bundle of national rights in whichever member states the proprietor desires. Under two new proposed EU regulations a new option will open up for a unitary European patent right, valid across (nearly) all Member States.
Getting to this position has not been without controversy. One of the sticking points of previous attempts to forge an agreement has been the issue of how languages are handled. Spain and Italy remain opposed to the idea because of the inevitable compromises that would result from administering a single right, but this has not stopped the other 25 EU Member States party to the European Patent Convention (EPC) from pressing ahead.
On 13 April 2011, the European Commission adopted two proposals implementing enhanced cooperation procedures in the area of unitary patent protection. The first is a proposed regulation of the European Parliament and the Council of the European Union “implementing enhanced cooperation in the area of the creation of unitary patent” 1, while the second is a proposed regulation of the Council, “implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements” 2. The proposed regulations now need to be approved by the Council of the European Union and the European Parliament.
On 13th April 2011, the European Commission adopted two proposals implementing enhanced cooperation procedures in the area of unitary patent protection. The first is a proposed regulation of the European Parliament and the Council of the European Union “”1, while the second is a proposed regulation of the Council, “”2. The proposed regulations now need to be approved by the Council of the European Union and the European Parliament.
On 27th June 2011, the Council of the European Union published their general approach to the two proposed Regulations. We take a look here at how the latest proposals are shaping up.
Under the proposed system, patent proprietors still have the option of applying for a patent directly in each member state of interest, or applying centrally at the European Patent Office (EPO), to obtain a separate and distinct patent right in each designated EPC member state. The proposal also allows the applicant to request that a patent granted by the EPO have unitary effect, resulting in a single right that covers the Member States participating in the “enhanced cooperation” agreement.
The proposed unitary right does not replace the existing system, and proprietors will be free to pick and choose how they achieve their desired coverage across Europe. For example, a proprietor may choose to request a unitary right covering the participating Member States and also choose to separately validate their patent in Spain, Italy and any of the other EPC contracting states that do not participate in the new agreement.
As the legislation currently stands, the patent proprietor will need to request unitary effect for their granted patent within one month of the EPO of the date of the publication of the mention of the grant in the European Patent Bulletin.
The Language Issue
Given that language has been by far the most sensitive issue to overcome on the road to a unitary European patent it is not surprising that this particular topic gets a separate Council Regulation all of its own.
The draft legislation begins boldly, stating that once a European patent with unitary effect has been published in the language of the proceedings (English, French or German), along with a translation of the claims into the other two official languages of the European Patent Office, “no further translations are required.” The aim of the proposal is to reduce the cost of obtaining patent protection across Europe by reducing the burden of obtaining translations and reducing the administration requirements involved. However, on the flipside, this leads to the potential problem that a European patent may cover the actions of a citizen of a Member State but would not be available in their native language. How would they be expected to know if they were infringing or not? The proposed solution is to use automatic machine translations into all languages of the Union. The EPO is responsible for this mammoth task, and work is in progress.
Until the new translation system is ready, a set of transitional provisions will be followed. According to the draft provisions, if the patent application is filed at the EPO in French or German then a full (human) translation of the specification of the patent into English is required at the time of requesting unitary effect. If the patent is filed at the EPO in English, however, then a full translation is required into an official language of one of the participating Member States, providing that the official language is also an official language of the European Union. As a gesture towards applicants who belong to Member States that do not use English, French or German as an official language, a reimbursement of the costs for translating from their language into one of these three languages will be offered. The transitional period is scheduled to terminate just as soon as “high quality” machine translations into all official languages of the Union are available. The quality will be measured by an independent expert committee, and the EPO have a maximum of 12 years to meet their standards.
If a European patent with unitary effect is ever litigated, the proposal states that it will be the responsibility of the patent proprietor to provide translations. A full (human) translation of the patent into an official language of the Member State in which infringement occurred, or in which the infringer lives, is required. The patent proprietor may also need to provide a full translation of the patent into the language of proceedings of the court. The courts will also have discretion to take the language issue into consideration when looking at awarding damages following court proceedings.
The primary aim of the proposed unitary right is to reduce costs for small and medium-sized enterprises. But it is interesting to consider what the more prolific patent filers will make of the new system. Our feedback has suggested that those with a choice may opt for the old system and actively avoid a unitary right. Why put all your eggs into a unitary basket?
Nevertheless, with these latest steps the unitary European patent has come tantalisingly close to becoming a reality. However, we must not forget that these recent developments do not deal with the more complex issue of enforcing a unitary patent across Europe. For that, we need a central European patent court, the development of which is proving to be trickier than the unitary patent right. On the bright side we are finding, more and more, that the courts of EPC Member States are making an effort to take into account corresponding decisions by other national courts. The slow march of harmonisation would appear to make a truly unitary patent right, granted and enforced as one, inevitable.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.