19 Jul 2023
The EU’s Unified Patent Court kicks in.
After years of debate and negotiation, the new European Unitary Patent System and Unified Patent Court (UPC) became operational on 1 June 2023, introducing new regulations, new infrastructure and a dedicated court for resolving patent-related litigation in Europe.
With the launch of the UPC, the ‘sunrise period’, the three-month window before the UPC became fully operational, officially ended. During this period, owners of existing European Patents granted by the European Patent Office (EPO), which had been validated in one or more countries that are members of the UPC, could file a free-of-charge request to opt out of the UPC.
Earlier in the year, in February 2023, the Ciarb Iberian Chapter held an event with Dr Theophile Margellos MCIArb speaking on the challenges and requirements for dispute resolution practitioners involved in Patent and IT rights in the EU, following the introduction of the EU’s proposed new Unitary Patent System. Mrs Nazareth Romero MCIArb and Mr Antonio Amusategui Batalla MCIArb joined Dr Margellos in a debate over the scope of the UPC and the potential challenges for dispute resolution practitioners generally and Ciarb members in particular.
During the February event, Amusategui, Margellos and Romero confirmed that the Unitary Patent EU Regulations would provide a single supra-national patent right covering all the EU member states that have fully ratified the UPC Agreement. However, not all EU member states chose to participate in the scheme or have yet ratified the UPC Agreement.
Spain, for example, will not join the Unitary Patent System. The Spanish government opposed the European Unitary Patent system, taking its objections to the EU Court of Justice (CJEU) on the grounds that the Spanish language had been omitted from the system. The languages chosen for the system include English, French and German. The CJEU ultimately rejected Spain’s objections and removed the last obstacle to the ratification of the UPC Agreement by the required number of states.
Though, The Iberian Chapter’s views had not a bitter flavour on these issues: Lisbon (Portugal) will have a role to play in the institutional scope in two ways, and we should point at that at our local level to enable a promissory theatre wherein to perform our members’ services with confidence in English, French or German languages.
The Unitary Patent System will provide another option for patent protection in Europe alongside existing ones: the national route or the "classic" European Patent. While the Unitary Patent System will reduce validations and translation costs and avoid contradictory rulings between countries, it will not replace the existing national and regional patent systems currently run through the national patent offices and the EPO. However, its introduction will have a significant impact on the future of European patents, on existing European patent rights, and, more broadly, on intellectual property litigation.
The panel of speakers confirmed that although the competence of the UPC will be exclusive for both European Patents with unitary effect and classical European Patents. Holders of, or applicants for the latter, may choose to exempt themselves from the competence of the UPC during a transitional period of seven years. This period is extendable for a further seven years after the enactment of the UPC Agreement. To qualify for this exemption, patent holders must have notified the Secretariat no later than one month before the end of the transitional period.
However, the exemption mechanism will only be available if an action has not been brought before the court. For this reason, the “sunrise period” was provided for European patent holders and applicants to exempt themselves from the court's jurisdiction before the enactment of the UPC Agreement. The exemption may be withdrawn at any time unless an action has been brought before a national court.
Regarding the UPC's Structure, the UPC comprises a Court of First Instance (including a central division and local and regional divisions) and a Court of Appeal. The seats of the central division of the Court of First Instance have been split between Paris, Munich, and Milan, while the Court of Appeal will be based in Luxembourg. Local divisions of the Court of First Instance will be based in Austria (Vienna), Belgium (Brussels), Denmark (Copenhagen), Finland (Helsinki), France (Paris), Germany (Düsseldorf, Hamburg, Mannheim, Munich), Italy (Milan), the Netherlands (The Hague), Slovenia (Ljubljana) and Portugal (Lisbon). A Nordic-Baltic regional division will also be based in Sweden (Stockholm).
The CJEU will be able to hear referrals on the interpretation of the law made by both the Court of First Instance and the Court of Appeal. Its decisions shall be binding on the UPC. The UPC will employ legal and technical judges who must be nationals of a Contracting Member State and have proven experience in patent litigation.
A Patent Mediation and Arbitration Centre (PMAC) with seats in Ljubljana and Lisbon has also been established. PMAC will be governed by its own rules. A judge of the UPC will be obliged to explore the possibility of settlement during the proceedings, including the use of PMAC.
In this respect, the judge-rapporteur has a key role since one of their tasks is to seek amicable solutions during interim proceedings. In that regard, the UPC Agreement provides that the judge-rapporteur shall explore the possibility of settlement with the parties, including through mediation and or arbitration using the PMAC facilities.
Parties who choose mediation to resolve a dispute will not subsequently be prevented from initiating court proceedings in relation to that dispute by the expiry of limitation or prescription periods during the mediation process. Should the parties jointly choose to use PMAC’s services, the Court may stay the proceedings.
By establishing a Mediation and Arbitration Centre, the UPC Agreement introduces a new and innovative concept in the EU that integrates dispute resolution into the court system. At the same time, the Agreement confirms the current trend of promoting and developing the use of dispute resolution mechanisms to resolve intellectual property disputes.
About
Dr Theóphile Margellos
Dr Théophile Margellos is a Mediator and Arbitrator. He is a Member of Ciarb’s Board of Trustees and Hon. Professor of the Faculty of Law of the Univ. of Alicante. He has served as President of the Boards of Appeal of the European Union Intellectual Property Office (EUIPO) and founded the EUIPO ‘s Mediation Service. He studied law at the Universities of Athens, Strasbourg and Freiburg i. Br. He has successively worked as a specialist attorney at law in IP and is a reference name in the EU Court of Justice (Luxembourg). He has been a member of the legal service of the European Commission and European Patent Attorney. He was also previously a law professor at the Jules Verne University in Amiens, France.
Nazareth Romero MCIArb
Nazareth Romero is a Madrid-based Lawyer and Partner at Ovoli Frugoni Romero, Arbitration Litigation. She is a European Branch Ciarb Committee Member and founding member of the Ciarb Iberian Chapter. Nazareth is one of the external experts commissioned by the Secretary of Justice Main Office – Commission EU, Arbitrator and TSD Expert (Trade and Sustainable Development Expert) by the European Commission for dispute settlement panels under trade agreements to which the European Union is a party.
Antonio Amusategui Batalla MCIArb
Antonio Amusategui Batalla chairs Ciarb Iberian Chapter and is a Member of the Board of Ciarb European Branch. He holds a Bachelor’s in Law and a Masters in Business Administration, Legal, Arts and Economics. Antonio has over thirty years’ experience in planning ventures and investments, negotiation processes and dealing approaches in urban land, property assets, corporate real estate and venture financing and projects. In recent years he has also assisted with financial and monetary policies, value channels and market transformation. He has taken a seat in virtual assets, blockchain, the crypto industry, and art investment.