READERS of ours would likely be aware that we've been tracking UPC very closely for a very long time. Much was at stake -- including software patents in Europe -- since the Battistelli era, which may have contributed to Brexit (the misconduct of the management at the European Patent Office (EPO) could not have helped, could it?).
epo.org
link). Notice the complete absence of UPC: (absurd, right?)
The European Patent Organisation is an international organisation established on the basis of the European Patent Convention (EPC). It is independent of the EU and currently has 38 member states, of which 28 are also members of the EU (incl. the UK) and 10 are not. The UK's withdrawal from the EU will consequently have no impact on its status within the European Patent Organisation.
The EPC establishes the procedure for the granting of European patents by the European Patent Office (EPO) for all its 38 contracting states. Hence, the procedure for obtaining a European patent before the EPO will not be affected by the UK's withdrawal from the EU. This applies equally to any opposition and appeal proceedings, as well as to any limitation and revocation proceedings. Furthermore, UK citizens and natural persons domiciled in the UK, as well as legal persons based in the UK (as governed by its national law) will still be able to file European patent applications. Under the EPC, anyone can file a patent application with the EPO, irrespective of nationality, residence or place of business.[ 1 ]
The UK's status as a contracting state to the Agreement on the application of Article 65 of the Convention on the Grant of European Patents (London Agreement)[ 2 ] will likewise remain unaffected by its withdrawal from the EU. Consequently, patent holders will remain exempt from filing any translations of European patents granted for the UK, after its withdrawal from the EU.[ 3 ]
Unitary Rights after Brexit
EU trade marks and registered Community designs will remain in force in the UK during the implementation period, after which they will be converted automatically into UK rights. EUIPO published updated information on Brexit on January 27, stating that “all proceedings before the Office that involve grounds of refusal pertaining to the territory of the UK, earlier rights originating from the UK, or parties/representatives domiciled in the UK will run as they did previously, until the end of the transition period”.
The UKIPO has also published guidance, in particular confirming that it will convert almost 1.4 million EU trade marks and 700,000 registered Community designs to comparable UK rights which will come into effect on January 1, 2021. Applicants that have applications pending at the end of the implementation period will have nine months in which to apply in the UK for the same protections.
Patents and the EPO
The European Patent Organization, which has 38 Member States, is not part of the EU. The UK has no plans to leave the EPO so European patents are unaffected by Brexit and European patent attorneys in the UK can continue to act before the European Patent Office.
However, there are some aspects of patent law that do have an EU dimension. One of these is the grant of Supplementary Protection Certificates for pharmaceutical and plant protection products. SPCs are granted as national rights and will continue to be examined under the current framework in the UK, though in time the law might diverge. The EU Biotech Directive also has an impact on patents, as do certain provisions of EU competition law, for example in FRAND cases. The proposed Unitary Patent and Unified Patent Court are not yet in effect as a challenge before the German Constitutional Court is still pending.
How do you expect the European patent landscape to evolve over the coming years?
The obvious thing to mention is whether the unitary patent and the UPC systems will come to pass with the fallout from Brexit and the German constitutional challenge. One other thing to watch is how the patent system copes with the growing new fields of connected and digital health and inventions involving AI. I think patent firms will need to evolve the way in which they organise their practice groups away from the historic splits between life sciences, chemistry and engineering and towards sectors that combine expertise between, for example, molecular biologists, data scientists, bioinformatics and tech experts, and form interdisciplinary groups of attorneys who can acquire deep knowledge of these new fields.
How do you expect the European patent environment to develop over the next few years?
For the past few years, European patent professionals have been eagerly awaiting the EU patent package (ie, unitary patent protection and the UPC). Various political and legal factors have made the future of this project very uncertain. However, whether or not the UPC eventually comes to fruition, I am hopeful that the spirit of this project will survive and eventually lead to more consistency and coherence in court decisions across the different European states and more efficient inter partes proceedings both in the national courts and before the EPO.
How do you expect the European patent environment to evolve over the coming years?
I am deeply sceptical about the pending EU patent package system. It is possible that there might be a return to the old idea of a community patent for larger geographical areas (eg, the European Union). I am also sceptical about the proposals for unitary patents and the UPC. The latter system in particular is much too complicated and expensive, particularly for small and medium-sized enterprises. Time will tell what happens to the current EU patent package after Brexit. I believe (and I could be wrong) that the German Constitutional Court will need another two to three years to decide whether, and in which form, Germany will revise the ratification process concerning the EU patent package. It is possible – and for some scholars probable – that the Constitutional Court will shift the pending complaint to the European Court of Justice (ECJ), with the aim of getting a comment from that court of supremacy in the EU package system, particularly if the United Kingdom does not want the ECJ to continue to have the final word in the UK patent system.
What single development would most improve the patent protection regime in the United Kingdom and Europe?
Although they have been a long time coming, the unitary patent and the UPC – when they come into existence – will supplement and strengthen the unitary patent granting system that already exists before the EPO. The UPC and the unitary patent should make it easier and faster to conduct litigation across many European countries and obtain injunctions where necessary. The process will significantly reduce translation costs and provide a simplified renewal fees system. Over time, the system will hopefully provide more certainty to clients compared with the current system, where different European jurisdictions can decide the same case in different ways.
According to data from the European Patent Office (EPO), in 2018, UK companies filed a total of 5,736 European patents.
EPO records show UK companies file 88.1 patents per million inhabitants, a ratio lower than Switzerland, Netherlands, Denmark, Sweden and Germany.