The Unitary Patent

[ By Morgane Martin, Intern | 17 June 2011 ]

The "Unitary Patent" is a new conception of the “European patent” result of the European Commission proposal of December 14th, 2010 following a request from 12 Member States to introduce an enhanced cooperation in the area of unitary patent protection.

Background situation

The Commission has developed two proposals :

  • the first one about the creation of a unitary protection effect for the European patent
  • the second one about a translation system for the European patent with unitary effect.

We are now expecting the European Parliament and the Council of European Union votes.

These patents will be issued by the European Patent Office (EPO), i.e. the principal organ of the European Patent Organisation, according to the article 4.3 of the Munich Convention on European Patent 1973.

Once agreed by the EPO, patents will from now automatically be valid in all Member States participating to the enhanced cooperation, i.e. all Member States except Spain and Italy.

The objective is to reduce costs and administrative procedures that are now facing the European patent applicants who want to protect their innovations in different Member States. There is also an automatic translation system of the same patents.

The legal basis of this project are the article 118 of the Treaty on the Functioning of the European Union (TFEU) which plans the creation of European titles "to ensure uniform protection of intellectual property rights in the European Union" as well as linguistic system associated; and the article 142 of the European Patent Convention, Munich 1973 (EPC), that allow States to conclude "special agreements" to confer a unitary effect to the EPO patent.

More information:

Problems raised

The idea sounds good, it follows a cost reduction and procedures simplification logic; however, there are many problematical points including three major elements:

» Firstly, the EPO is an intergovernmental organization benefiting of an administrative and financial autonomy (Article 4.1 of the Munich Convention, 1973), which makes it a completely independent organization from the Union.

» Secondly, the decisions made by the EPO can not be subject to legal challenge in the national courts of the participating Member States and therefore, they can not be subject to preliminary ruling which is the principal way for judicial review available to the Union on the texts she is responsible for. (Justification for the 9th amendment proposed by Gerald Sédrati-Dinet).

So until there is no jurisdictional cooperation, each European counterfeiting case will have to take place before each national court, which means there is no unitary effect of the European patent.

The problem is that in March 2011, an opinion of the European Court of Justice (CJEU) qualified as illegal the unified jurisdiction project for European patents.

» Thirdly, the EU absolutely needs substantive patent law to create a unitary protection effect for the European patent.

» Finally, the European patent with unitary effect fails to comply with its legal basis (article 118 TFEU and article 142 EPC).

Indeed, the article 118 TFEU gives a mandate to the European Union to create a “new” patent title that would have a unitary effect; it cannot be just an updating of the existing European patent as it is for instance.

In addition, the article 142 EPC, which allow States to conclude “special agreements” in order to give unitary effect to their European patent, is an inappropriate legal basis. The European Patent Convention is an international agreement and isn’t relevant in the European Union’s framework, using this article to found the European patent with unitary effect is affecting the European dimension of this title.

Lastly, the article 118 TFEU belong to the shared competences of the European Union and Member States which means that Members States cannot use the article 142 to give unitary effect to an EPO patent without involving the European Union.

More information:

To conclude, at the current stage, the Commission's project of “European Patent with unitary effect" may have consequences localized in Europe but is absolutely outside of the European Union's scope.

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