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IP Cases & Commentary – Details

13 January 2012

The Unified Patent Court - Views from the UK Parliament’s European Scrutiny Committee

Scott Gardiner

2011 saw the Court of Justice of the European Union (CJEU) reject previous draft proposals for the establishment of a Unified Patent Court and Unitary Patent (as we reported in March 2011, see link, right). Recognising this, the EU Commission made changes and pushed on with the new proposals at considerable speed. It had been hoped that they would have been finalised before the end of 2011 but as a result of opposition from some countries, companies and patent practitioners, this has not happened. The UK Parliament’s European Scrutiny Committee (bestowed with the task of assessing these reform proposals) has recently delivered its conclusions on the current ‘Draft Agreement on a Unified Patent Court and Draft Statute’ which we will consider in this article.

The proposals relate to a unified patent litigation system which will provide for a centralised registration and enforcement framework across the European Union. Substantively, once proposals have been approved, the new court is expected to assume responsibility for the adjudication of patent infringement and validity actions. It is important to add that at this stage these responsibilities will be in respect of both European patents and, upon their introduction, unitary patents.

Despite the basic concept generally having widespread support within the UK, the Committee has refused to accept the proposals and to release the ‘Draft Agreement’ from its scrutiny, citing a number of deficiencies as the reason. It has expressed particular concern that the normal jurisdiction of the UK courts to decide on national patents granted by the European Patent Office (EPO) would be removed. The Committee has taken the view that this would be detrimental to small and medium-sized businesses, especially those whose patent portfolios consist of EPO national patents, owing to the likely increased costs associated with litigating in the Unified Court. Additionally, they have questioned the effectiveness in the proposals of extending the CJEU’s competence to hear matters relating to substantive patent law and have commented that this would be “wholly unsatisfactory” given the level of expertise required to justly adjudicate on such cases as well as the delays that would occur. There are also concerns about the possible bifurcation of infringement and validity actions.

Putting the concerns of the European Scrutiny Committee to one side, advocates for the introduction of the Unified Patent Court (UPC) often cite the currently fragmented approach to rights enforcement within the EU as a particularly compelling reason for the introduction of a central court. Moreover, the current practice of ‘forum shopping’ (whereby patentees choose to strategically file actions in jurisdictions which they view as being somewhat ‘pro-patentee’ or otherwise favourable) should be diminished, with the positive result of greater equality and economy within the European Union. Of course, it must be said that this is dependent upon the UPC being of sufficient quality and on the Rules of Procedure being acceptable.

As concerns the subject of injunctions, it is expected that the UPC (and indeed the regional courts that would deal with some infringement cases) should be able to grant these with pan-European effect. Given the disparity which exists between the approaches of national courts, the establishment of the UPC should avoid cases where European patents which are validated (and litigated) in a number of member states, are subjected to very different judicial treatment. This, theoretically, should prove to be economically advantageous, serving to improve access to a judicial system which can be both financially prohibitive and too lengthy for many patentees. However, many do not consider the current proposals as satisfactory and are of the opinion that their concerns have not been fully addressed.

The Commission is still actively trying to finalise the proposals and in February 2012 a ‘plenary vote’ is planned on the approval of the reforms, which essentially requires the participation of all relevant member states. The result of that vote is keenly awaited by both national governments and European patent practitioners alike and we look forward to providing you with a further update upon its conclusion.

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