Following the failure of the 1975 Community Patent Convention and an attempt in 2000 by the EU Council to implement a unitary EU patent by means of a Regulation, it was confirmed last year that unanimity on the translation arrangements for the Regulation was impossible and in these circumstances, 25 of the 27 Member States informed the Commission that they wished to establish "enhanced co-operation" between themselves towards a unitary patent.
The Commission has published two draft Regulations, and on 27 June 2011 the EU Council announced that political agreement among Member States has been reached over these regulations.
Enhanced co-operation, sometimes termed "variable geometry", is a procedure introduced in the 1997 Treaty of Amsterdam, following enlargement of the EU from 12 states to 15 states. Under this procedure, a minimum of 9 EU member states are allowed to establish advanced integration or co-operation in an area, within EU structures, without some unwilling other members being involved.
In the case of the Community patent, all but Italy and Spain are to be involved.
We briefly review their effect here, whilst remaining slightly sceptical, in view of decades of past history, of their ultimate success.
The two Regulations are:
• a Council Regulation implementing enhanced co-operation in the area of unitary patent protection (COM(2011)215/3 and
• a Council Regulation implementing enhanced co-operation in the area of unitary patent protection with regard to the applicable translation arrangements (COM(2011)216/3.
Under the first of these, a European patent that is granted by the EPO with an identical scope of protection in respect of all the participating Member States shall, if suitably registered, have unitary effect in those states, i.e. a unitary character with uniform protection and equal effect in those states. It will be something approximating to a true European patent, lacking Italy and Spain.
If a European patent is granted with different sets of claims for different participating Member States (as is sometimes the case as a result of prior art), it will not benefit from unitary effect and will be treated in the current manner after grant as a bundle of national patents.
Registration of a European patent to have unitary effect will be on a Register for unitary patent protection administered by the EPO.
The Regulation defines that a European patent with unitary effect shall be dealt with in its entirety, and in all the participating Member States, following the same laws of property as a national patent of the participating Member State in which, according to the European Patent Register, the proprietor of the patent had his residence or principal place of business on the date of filing of the application for the patent.
Where the proprietor did not have his residence or principal place of business in one of those states, it will be dealt with as a national patent of the participating Member State in which the proprietor had a place of business on that date.
Special rules are provided for in case of joint proprietors. Where no proprietor has his residence or a place of business in a participating Member State, the European patent with unitary effect as an object of property shall be dealt with as a national patent of Germany (being the State where the EPO has its seat). These are essentially the same rules as apply to Community Trade Marks and Designs at present.
Court yet to be arranged.
The Commission acknowledges that appropriate jurisdictional arrangements have yet to be defined and agreed for the unitary patent protection to work properly in practice, allowing for patents to be enforced or revoked throughout the territory of the participating Member States. Specific jurisdictional arrangements had been proposed but rejected by the Court of Justice of the European Union (see www.jenkins.eu/pi-spring-2011/european-patent---two-steps.asp) and a modified proposal is envisaged to take into account the Court's concerns.
The second Regulation with regard to the applicable translation arrangements provides that, upon expiry of a transitional period, where the specification of a European patent has been published by the EPO in the usual manner, no further translation is required for it to be eligible for unitary effect. During the transitional period, if the original language is English, the entire patent must be translated into another official language of a participating Member State, or if the original language is French or German, the entire patent must be translated into English. The transition period will last for 12 years but may be shortened if machine translations obviate the need for translation of the entire specification.
In the event of a dispute relating to the patent, the patent proprietor will be required to provide a full translation of the patent into an official language of the participating Member State in which:
• the alleged infringement took place, or
• the alleged infringer is domiciled.
Where these languages differ, the choice lies with the alleged infringer.
Courts shall, when considering claims for damages, take into consideration that the alleged infringer may have acted without knowing or having reasonable grounds to know that he was infringing the patent before having been provided with the necessary translation.
A compensation scheme is proposed, to be administered by the EPO, to compensate all translation costs up to a ceiling for applicants filing patent applications at the European Patent Office in one of the official languages of the Union that is not an official language of the EPO (i.e. English, French or German).