The final package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force on 16 March 2013 (for a list of amendments and their effective dates, see here). By this date, the most significant amendments of the new Act will enter into force, namely the transformation from the traditional first-to-invent regime to the new first-inventor-to-file regime.
Besides reducing the USPTO’s backlog of approx. 680.000 patent applications and improving patent quality, the main objective of the America Invents Act is to harmonise the US patent system better with international patent law standards and by that facilitate second filings of US applicants in foreign jurisdictions.
This is indeed a brilliant idea, not only for US applicants but also for European applicants and practitioners, as it will align the US system closer with the European patent system. However, event for those legal instruments that are clearly adapted to the European point of view, important differences remain. Some of those tiny differences that may have a huge impacts on practice are outlined below:
The short answer is … we don’t know yet!
A slightly longer answer is: It will, in the end, depend on the CJEU’s own interpretation of Article 5 of the Unitary Patent Protection Regulation (UPPR) and its understanding of the nature of the Unitary Patent Court Agreement (UPCR).
And a straightforward answer may be: Only very rarely, if at all, because of three reasons:
- The CJEU is not a regular third instance above the two instances of the Unified Patent Court.
- The centralised structure of the Unified Patent Court – involving a Central Division in the first instance and a sole Court of Appeal as the second instance – will largely ensure uniform interpretation of substantive patent law anyway.
- As substantive patent law is largely harmonised in Europe already and thus falls under the acte-clair-doctrine, there are only very limited substantive patent law issues left that are in risk of being interpreted differently in different countries (or by different local/regional UPC divisions) and would thus need to be decided by a preliminary ruling according to Art 267 TFEU.
The more detailed answer. While all this may or may not be true, it still makes sense to (again) look closer into Article 5 UPPR, which has been introduced as Article 5a into the draft Regulation on the EU Council meeting of 28/29 June 2012 in exchange of former Articles 6 to 8 draftUPPR that caused so much headaches to (parts of) the profession and industry (see e.g. here and here), especially in the UK (see here). The removed UPPR articles have been introduced into the UPCA as new Articles 14f to 14i. New Article 5 UPPR and its crucial § 3 reads:
Article 5 (Uniform protection)
1. The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations.
2. The scope of that right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.
3. The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 7.
But what does that mean?
The language regime as intended for the European Unitary Patent is described in the Draft Council Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (I take the latest known version from Document 18855/2/11 dated December 12, 2012). In Recital 11 thereof we read:
In order to promote the availability of patent information and the dissemination of technological knowledge, machine translations of patent applications and specifications into all official languages of the Union should be available as soon as possible. Machine translations are being developed by the EPO and are a very important tool in seeking to improve access to patent information and to widely disseminate technological knowledge. The timely availability of high quality machine translations of European patent applications and specifications into all official languages of the Union would benefit all users of the European patent system. Machine translations are a key feature of European Union policy. Such machine translations should serve for information purposes only and should not have any legal effect
This apperars to be, well, courageous not only because of such advanced technology is not available today but also because of it is not clear if it can be achieved anyway in any foreseeable future. Meanwhile, an interim language regime is to be created as described in Recital 12:
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While in the European Parliament the plenary debate on the Unitary Patent Package is going on, Mr Yves Bot, Attorney General in charge of joint cases C‑274/11 and C‑295/11 pending before the Court of Justice of the European Union, has delivered his opinion: In Italian and a few not-so-common languages. However, Google might be your friend in such situations:
IV – Conclusion
163. In the light of all the foregoing considerations, I propose that the Court should:
1) dismiss the appeal;
2) order the Kingdom of Spain (Case C-274/11) and the Italian Republic (Case C-295/11) to take charge of their own costs and the Council of the European Union and the interveners to bear their own costs .
Just to remind you: Both cases have been filed by Italy and Spain, respectively, in order to challenge the decision of the EU Council to allow the instrument of enhanced co-operation provided by the Lisbon Treaty (under certain conditions disputed in the lawsuit). But Mr Bot’s Opinion is not necessarily the last word on that matter: First, the Court is free to depart from Mr Bot’s Opinion, second, at some later point in time a case might be filed allowing CJEU to have their say as to whether or not the Unitary Patent package as debated in the Parliament just this minute is compatible with EU treaties or not.
[UPDATE 2012-12-11 11:05] Meanwhile also translations in many other languages are available on-line, e.g. in English
[UPDATE 2012-12-11 13:25] Just an hour or so ago, the European Parliament has approved the Unitary Patent package:
The Rapkay report was approved by 484 votes to 164 with 35 abstentions.
The Baldassarre resolution was approved by 481 votes to 152 with 49 abstentions.
The Lehne report was approved by 483 votes to 161, with 38 abstentions.
Procedures: Co-decision (Ordinary Legislative Procedure) 1st reading (unitary patent), Consultation (language regime), non-legislative resolution (unified patent court)
Press conference: Tuesday, 11 December at 15:00
A look into the Draft Agenda for the plenary session of the European Parliament on Tuesday, 11 December 2012 reveals that the discussion and vote on the Unitary Patent Package is due:
- #146 — Creation of unitary patent protection
Report: Bernhard Rapkay (A7-0001/2012)
Report on the proposal for a regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection
[COM(2011)0215 - C7-0099/2011 - 2011/0093(COD)]
Committee on Legal Affairs
- #147 — Unitary patent protection
Report: Raffaele Baldassarre (A7-0002/2012)
Report on the proposal for a Council Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements
[COM(2011)0216 - C7-0145/2011 - 2011/0094(CNS)]
Committee on Legal Affairs
- #148 — Jurisdictional system for patent disputes
Report: Klaus-Heiner Lehne (A7-0009/2012)
Report on jurisdictional system for patent disputes
Committee on Legal Affairs
Also on December 11, 2012, at the Court of Justice of the EU in Luxembourg the Attorney General who is in charge of joined cases C-274/11 C-295/11 (Annulment of Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection (OJ 2011 L 76, p. 53) Misuse of powers – Failure to respect the judicial system of the European Union) will deliver his or her Opinion. The Court might later well derive from that but the Opinion will, as usual, give a clue as to whether or not Spain and Italy might have some chance to spoil the project of enhanced co-operation in the field of patents at last.
According to the closing note at the very end of the text of the Draft agreement on a Unified Patent Court (Document 16222/12 [2012-11-14]), indication is given that the Agreement is scheduled to be signed on February 18, 2013 in Brussels. After that date, a rush to the respective national Parliaments of all of the participating Member States is attributed top priority on the agendas of the Governments; c.f. Document 16221/12 [2012-11-14] Updated draft declaration of the contracting Member States concerning the preparations for the coming into operation of the UPC agreement.
Article 59 Para. 1 of the Agreement stipulates:
Entry into force
(1) This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 58a, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EC) 44/2001 concerning its relationship with this Agreement, whichever is the latest.
Well, what would happen if the quorum of 13 ratifications including Germany, United Kingdom and France (i.e. the three Member States in which the highest number of European patents) is not reached in some foreseeable future due to some political misfortune? Take, for example, a purely fictional case where the United Kingdom instead of timely ratifying the Agreement holds a referendum resulting in a margin of votes in favour of leaving the EU at all (note also this and that).
In such case the Regulation of the Council and the European Parliament implementing enhanced cooperation in the area of the creation of unitary patent protection (Document 11328/11 [2011-06-23]) provides a matching clause in Aricle 22 Para. 2:
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As already reported (here and there), up to now the EU has not published the compromise proposal which was subject-matter of the discussion in JURI last Monday. The only source available to the general public appeared to be a leak originally published on the website of Pinpact.com. They simply have put a PNG graphics file on their server showing a single page comprising the wording of Article 5a (new) as well as Recitals 9 and 10 in the style on a non-paper, i.e. without any Official headings etc..
Just today, the law firm of Bardehle Pagenberg has published another version of that document comprising 3 pages in total. On page 2 thereof we find an explanation which is, in my understanding, not from Bardehle Pagenberg but from the original Cyprus non-paper. The following paragraphs might therefore shed some light on the logic behind this proposal:
- The proposed new Article 5a of the UPP Regulation is based on the assumption that it would seem sufficient that the UPP Regulation itself provides for the right of the patent proprietor to prevent third parties from committing acts against which the patent provides protection. These acts cover both the direct and the indirect use of the patented invention by a third party (as initially spelled out in more detail in the former Articles 6 and 7 of the UPP Regulation). The right of the patent proprietor to prevent third parties from such acts is subject to applicable limitations (as initially spelled out in former Article 8 of the UPP Regulation). The details of this right and its limitations are now determined pursuant to new Article 5a(3) of the UPP Regulation – by reference to the national law of the Member State applicable under Article 10 of the UPP Regulation of which Articles 14f to 14i of the UPC Agreement (as now amended to apply also to European patents with unitary effect, see in more detail point 3 below) are an integral part.
- The UPP Regulation furthermore stipulates in new Article 5a(2) that the right to prevent third parties from infringing the patent and the limitations to this right shall be uniform in all participating Member States in order to satisfy the requirement of the Regulation’s legal basis, i.e. Article 118(1) TFEU which provides for the establishment of uniform protection. This means that participating Member States are prevented from adopting in their national law provisions which would undermine the uniformity of protection.
- Pursuant to new Article 5a(3) UPP Regulation, uniformity of protection will be achieved by the reference to the law of the participating Member State whose law is applicable to the European patent with unitary effect as an object of property pursuant to Article 10 UPP Regulation. Implicitly this refers to Articles 14f to 14i of the UPC Agreement, which correspond to the former Articles 6 to 8 of the UPP Regulation and which define the scope of the right of the proprietor, its limitations and prior user rights. Articles 14f to 14i of the UPC Agreement which previously applied only to ”classical” European bundle patents have now been amended so that they now apply also to European patents with unitary effect. These Articles defining the scope of the right, its limitations and prior use rights will form an integral part of the national law of each participating Member State in which the UPC Agreement will come into force and for which the European patent with unitary effect will become operational.
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A number of EU Council Documents relevant with regard to the Unitary Patent / Unified Patent Court have recently been published:
- Document 16222/12 [2012-11-14] Draft agreement on a Unified Patent Court and draft Statute – Consolidated text. Prepared by Cyprus EU Presidency.
- Document 16221/12 [2012-11-14] Updated draft declaration of the contracting Member States concerning the preparations for the coming into operation of the UPC agreement. Prepared by Cyprus EU Presidency.
- Document 18855/11 [2012-11-13] COMMON GUIDELINES Consultation deadline for Croatia: 23.11.2012
- Document 15765/12 [2012-11-05] Corrigendum to Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection.
- Document 14750/12 [2012-10-12] Draft agreement on a Unified Patent Court and draft Statute – Consolidated text. Prepared by Cyprus EU Presidency.
Especially Document 16222/12 appears to be of particular interest today; it reflects the shift of provisions of substantial patent law from the Draft Regulation into the Unified Court Agreement.
Concerning professional representation of parties by European Patent Attorneys, the state of play appears to be as follows:
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Yesterday I reported that after COREPER had approved some non-disclosed proposal to break the political deadlock concerning the pending Draft for a Regulation creating a European Patent with Unitary Effect, at 7pm JURI – the Legal Affairs Committee of the European Parliament – was rushed into an extraordinary session dealing only with this topic.
Up to now there was silence on what might have emergend from those JURI deliberations.
Well, according to the calender, summer has passed already months ago. But on the European political stage politicians playing the (never-ending?) saga of the EU Patent (European Patent with Unitary Effect, to be more precise), the summer recess apparently has closed just today.
In our last posting dated July 10, 2012, we reported that the compromise reached June 29, 2012 on the European Council summit held in Brussels had not been received by the Committee of the European Parliament (JURI) well. The point was that Prime Minister David Cameron, on behalf of Her Majesty’s Government in London, had pushed through his demand that some Articles 6 to 8 of the planned EU Regulation creating a European Patent with Unitary Effect are to be deleted from the final text. Those text portions comprised legal definitions of substantial patent law, and obviously pressed by a bunch of eurosceptic backbenchers in his own party there might have been some urgency to make the world believe that the unloved Court of Justice of the European Union could be kept at bay from mingling with patent matters by such kind of last-minute amendment.
However, JURI took this decision of the Heads of Government and/or Heads of State as sort of a scandal and refused to give consent. If the plenary of the European Parliament had followed, the Unitary Patent (once more) would have been dead on arrival.
Rumours are going around since weeks that the Cyprus EU Presidency is working hard behind the scenes to help overcoming this deadlock but no details were published. Last weekend, tweets emerged suggesting that JURI might be rushed into an extraordinary session just tonight, November 19, 2012, 19:00 hours, to vote on a proposal already finalised by COREPER.
Stay tuned. More news will come up soon.
The k/s/n/h::law blog
Some of the patent attorneys of the KSNH law firm have joined their efforts to research what is going on in the various branches of IP law and practice in order to keep themselves, their clients as well as interested circles of the public up to date. This blog is intended to present results of such efforts to a wider public.
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