Abstract
The paper explores how coexistence and complementarity will work under the planned scheme for the creation of a European patent with unitary effect together with a supranational patent court system. It addresses the various (legal, institutional, economic) aspects of the future coexistence of national patents, European patents and European patents with unitary effect. It outlines the existing variations on coexistence within the present European intellectual property framework, then, after a brief summary of the main elements of the current unitary patent package, it goes on to describe how the various patent titles will coexist within the multi-layer system which will be established by that package. That is followed by an analysis of the future coexistence of national and European patent institutions.
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Notes
Oxford Advanced Learner’s Dictionary [3], p. 229.
The Free Dictionary, www.thefreedictionary.com.
The Free Dictionary, www.thefreedictionary.com.
Oxford Advanced Learner’s Dictionary [3], p. 247.
Council Regulation (EC) No. 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, OJ L 93, 31 March 2006, p. 12.
Council Regulation (EC) No. 2100/94 of 27 July 1994 on Community plant variety rights, OJ L 227, 1 September 1994, p. 1. The preamble of that Regulation states that “it is appropriate to create a Community regime which, although co-existing with national regimes, allows for the grant of industrial property rights valid throughout the Community.” Furthermore, Article 3 of the same Regulation provides that the Regulation “shall be without prejudice to the right of the Member States to grant national property rights for plant varieties, subject to the provisions of Article 92(1)”, while, in turn, Article 92 contains the following provisions: “1. Any variety which is the subject matter of a Community plant variety right shall not be the subject of a national plant variety right or any patent for that variety. Any rights granted contrary to the first sentence shall be ineffective. 2. Where the holder has been granted another right as referred to in paragraph 1 for the same variety prior to grant of the Community plant variety right, he shall be unable to invoke the rights conferred by such protection for the variety for as long as the Community plant variety right remains effective.”
Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark (codified version), OJ L 78, 24 March 2009, p. 1. Hereinafter referred to as the “CTMR”.
See also with respect to designs: Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs, OJ L 3, 5.1.2002, p. 1, amended by Council Regulation No. 1891/2006 of 18 December 2006 amending Regulations (EC) No. 6/2002 and (EC) No. 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, OJ L 386, 29.12.2006, p. 14. For instance, Article 95 of that Regulation deals with parallel actions on the basis of Community designs and national design rights and expressly refers to the possibility of simultaneous protection.
Regulation (EC) No. 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No. 1576/89, OJ L 39, 13 February 2008, p. 16.
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. Given the fact that Regulation (EC) No. 110/2008 stipulates that it is the Member States that submit the application to the Commission [as opposed to Regulation (EC) No. 510/2006 where the national authorities are only “forwarding” applications of producer groups], it can be assumed that the GI regime of spirit drinks follows the last option, i.e., national protection is a pre-requisite of a European Union application.
The original idea behind the CTMR was that applicants should be guided by their business needs when choosing Community-wide protection for their trade marks, for example when their targeted market covers the entire internal market or, at least, a significant part of it. In line with this principle, one of the fundamental goals of the CTMR was to establish a balanced, mutually complementary relationship between the co-existing Community and national trade mark systems with no hierarchy but with a lot of interaction. This is clearly set out in the sixth recital of the CTMR: “The Community law relating to trade marks … does not replace the laws of the Member States on trade marks. It would not in fact appear to be justified to require undertakings to apply for registration of their trade marks as Community trade marks. National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Community level.”
Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, OJ L 213, 30 July 1998, p. 13; Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, OJ L 195, 2 June 2004, p. 16.
Convention on the grant of European patents (European Patent Convention) of 5 October 1973, http://www.european-patent-office.org/legal/epc/index.html.
Singer [4], p.16.
Singer [4], p. 16.
Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, OJ L 361, 31 December 2012, p. 1.
Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, OJ L 361, 31 December 2012, p. 89.
Agreement on a Unified Patent Court. Brussels, 11 January 2013, 16351/12, PI 148, COUR 77. The signing ceremony of the Agreement took place in Brussels on 19 February 2013, in the margins of the Competitiveness Council meeting.
Article 84(2), UPC Agreement, op. cit. (18).
Article 87(2), UPC Agreement, op. cit. (18).
Article 24(1)(a), UPC Agreement, op. cit. (18).
See the UPC Agreement, op. cit. (18).
For instance paragraph (3) of the Council Conclusions of 7 December 2009 has stated that “the following conclusions on the main features of the European and European Union Patents Court (I) could form the basis of, while on the European Union patent (II) they should form part of the overall final agreement on a package of measures for an Enhanced Patent System in Europe comprising the creation of a European and European Union Patents Court (EEUPC), a European Union patent, including the separate regulation on the translation arrangements …, an Enhanced Partnership between the European Patent Office and central industrial property offices of Member States and, to the extent necessary, amendments to the European Patent Convention”. Enhanced Patent System in Europe—Council conclusions. Brussels, 7 December 2009, 17229/09, PI 141, COUR 87.
Hilty et al. [2], p. 1.
Unlike for example Article 75 of the 1989 version of the Community Patent Convention, which did contain quite detailed provisions on the prohibition of simultaneous protection and its legal effects. (89/695/EEC), OJ L 401, 31 December 1989, p. 1. The same goes for Article 54 of the Commission’s 2000 Proposal. Proposal for a Council Regulation on the Community patent, Brussels, 1 August 2000, COM(2000) 412 final, 2000/0177 (CNS).
Recital (10) and Article 5, Translation Regulation, op. cit. (17).
Article 2(c), UPP Regulation, op. cit. (16).
Therefore, European patents that are granted with different sets of claims for different participating Member States will not benefit from unitary effect.
Articles 3–4 and 9(1)(g), UPP Regulation, op. cit. (16).
Article 3(2), UPP Regulation, op. cit. (16).
Article 1(2), UPP Regulation, op. cit. (16). Naturally, this legal fiction would only apply for the purposes of Part IX of the EPC and only in the context of the EPC, as, within the European Union’s legal system, European Union Regulations are normally not to be regarded as international treaties.
Article 142 EPC is invoked in the UPP Regulation in spite of the fact that this provision envisages a situation where the group of contracting states concluding a special agreement provide that “a European patent may only be granted jointly in respect of all those States”, which would have been the case under the Community Patent Convention, but which is not going to be the case under the UPP Regulation.
Article 5 (new), draft compromise amendment to the UPP Regulation, dated 14 November 2012.
Under Article 7, as an object of property, a European patent with unitary effect shall be treated in its entirety, and in all the participating Member States, as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register, the applicant had his residence or principal place of business (or, in the absence of the former, place of business) on the date of filing of the application for the European patent. Where no applicant had his residence, principal place of business or place of business in a participating Member State in which that patent has unitary effect, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the State where the EPOrg has its headquarters in accordance with Article 6(1) EPC UPP Regulation, op. cit. (16).
Article 2(g) and Part I, Chapter V, UPC Agreement, op. cit. (18).
Article 11, UPP Regulation, op. cit. (16).
Hanns Ullrich gives the following summary of the unitary effects attached to a European patent by registering its unitary character: “by virtue of the UPP Regulation, the registration will transform 25 national patents into one single patent. It will determine this unitary patent’s status as tradable property by reducing the applicable national laws from 25 to one single (national) law, give it a specific language regime and a proper design of the exclusive right it confers, bring it under its own, Union related jurisdiction, and, last but not least, impose its own ‘unitary’ renewal fees, which, if not paid, will result in the lapse of the entire protection.” Ullrich also points out that “the theoretical concept of national patents or a ‘European’ patent continuing to exist as such while producing exclusive effects and becoming an object of trade as a matter of European Union law represents but a doctrinal bubble. It is these effects of exclusivity, which constitute the property right. There are no national patents nor can there be a ‘European’ patent without such legal substance. Even if the UPP-Regulation does not aim at establishing unitary patents ‘ab ovo’ in the same way as does national law under Art. 64 para. 1 EPC, it will produce this effect subsequently as a matter of Union law, namely when the request for unitary effect has been registered in conformity with … [the] proposed UPP Regulation”. Ullrich [5], pp. 44–45.
Recitals (9) and (10), UPP Regulation, op. cit. (16).
This is fiercely criticised by Ullrich: “if limited to national territories, compulsory licenses covering the territory of enhanced cooperation will remain virtually unavailable, and, if admissible at all, they are systematically useless, if not counterproductive in a system of unitary patent protection for advanced market integration.” “[T]he remedy [of compulsory licences] needs to be effective. This, however, it will never be, if to obtain compulsory licenses with respect to the territory covered by the unitary patent, interested market actors, which the patentee has already dismissed as licensees, have to go through a large number of national granting procedures following different rules and holding no promise whatsoever of producing at least similar results”. “Primacy of Union law would seem to stand in the way of national authorities or courts granting compulsory licenses by virtue of national law. Compulsory licenses affect the very essence of the title of property and of its unitary effect, and thus interfere directly with the primary law establishing and protecting the property.” “More generally, referral of compulsory licenses to national law and national territorial limitation of the compulsory license runs contrary to the very rationale of advanced market integration by enhanced cooperation. This is so not only, because the alternative to incurring the high transaction costs of a bundle of compulsory licenses covering the entire territory of enhanced cooperation would consist in limiting the number of requests to only a few national territories with a view to obtain at least an economically sustainable minimum part of the geographic market, this meaning again a division of the ‘internal’ market of enhanced cooperation. Rather, the very concept of national compulsory licenses for a unitary patent runs contrary to the rationale of enhanced cooperation in the field precisely of unitary protection. Such compulsory licenses would, indeed, not only be granted with a territorial limitation, but on national terms, i.e., on terms, which may vary, and which typically are established by reference to national markets”. Ullrich [5], pp. 38–40.
Hilty et al. [2], p. 2.
In that regard, the Hungarian Government previously raised a number of concerns. “What this Chapter apparently strives to achieve is unification of Member States’ national laws on European patents. This inevitably raises a number of questions and concerns as to the future structure of the European patent system and its underlying principles. So far, it has been the general understanding that, once granted by the EPO in a single, unified procedure, a European patent becomes a bundle of patents having the effects of a national patent in the States for which it was granted. With the few exceptions where some fundamental substantive patent law standards are set by the EPC itself, European patents are subject to the national rules of those contracting states in which they have effect. … Therefore, the inclusion of substantive provisions unifying national laws relating to European patents into the Agreement would fundamentally change the very nature of European patents and significantly alter the whole structure of the European patent system—without proper justification. This change would also blur the lines between European and Community patents. In addition, it is also doubtful whether, and how, an agreement on judiciary can establish substantive provisions as well. It is not clear, either, from where Community competence (if any) would come to lay down substantive provisions unifying Member States’ national laws on European patents.” Hungary’s comments on the revised Presidency working document (No. 7928, PI 23, COUR 29, Subject: Draft Agreement on the European and Community Patents Court and draft Statute), Budapest, 27 March 2009, pp. 3–4.
See e.g., de Visscher [1], p. 214.
Council Decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection (2011/167/EU), OJ L 76, 22 March 2011, p. 53.
Article 89(1) of the UPC Agreement [op. cit. (18)] reads as follows: “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 84, 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 (EU) No. 1215/2012 concerning its relationship with this Agreement, whichever is the latest.” In addition, Article 22(2) of the UPP Regulation [op. cit. (16)] provides that “[b]y way of derogation from Articles 3(1), 3(2) and 4(1) [i.e., the provisions on unitary effect], a European patent for which unitary effect is registered in the Register for unitary patent protection shall have unitary effect only in those participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration.”
Community patent—Common political approach. Brussels, 7 March 2003, 7159/03, PI 24.
CA/D 7/06, Decision of the Administrative Council of 30 June 2006 approving the five elements of the European Patent Network.
That was the terminology used at that time.
Towards an Enhanced Partnership between Patent Offices under the Community Patent. Brussels, 3 February 2009, 6044/09, PI 9. Towards an Enhanced Partnership between Patent Offices under the Community Patent—European Standard for Searches. Brussels, 30 July 2009, 12342/09, PI 78. Enhanced Partnership in the Community Patent—Non-paper by the Danish, Finnish and United Kingdom delegations. Brussels, 15 September 2009, 13317/09, PI 88.
Council Conclusions (2009), op. cit. (23).
Hungary’s comments on the Economic Cost-Benefit Analysis of the Community Patent by Pottelsberghe and Danguy, Budapest, 29 April 2009, p. 2.
Recital (22), UPP Regulation, op. cit. (16).
Recitals (19)–(20) and Article 12, UPP Regulation, op. cit. (16).
Council Conclusions (2009), op. cit. (23).
2982nd meeting of the Council of the European Union “Competitiveness” (Internal Market, Industry and Research), Brussels, 3 and 4 December 2009, 8. Enhanced patent system in Europe—Adoption of Council conclusions, 16114/09, PI 123, COUR 71 + ADD 1, Statement for the minutes by Hungary.
Further arguments were put forward in the above-mentioned paper submitted by the Hungarian Government in response to a study on the economic aspects of the Community patent: “Although the study looks into certain important aspects of the future Community patent, it seems not to address a number of vital issues. In particular, it neither examines, nor evaluates those effects that an increasing number of patent rights held by non-European Union companies would have on Europe’s competitiveness. In this context, it is worth noting that less than half of all European patent applications are filed by residents of EPC contracting states. Therefore, lowering the costs of patenting in Europe will create an incentive not only for European companies but also for overseas applicants. It is also doubtful whether we should really encourage an even more extensive use of the patent system. Globally, one can witness a dramatic growth in the number of patent applications, and, as a result, patent offices are desperately looking for ways to cope with their ever increasing workloads and backlogs. This quantitative pressure on the patent system has also given rise to concerns about its capability to maintain high quality standards. These concerns are also reflected in the Commission’s recent Communication on an Industrial Property Rights Strategy for Europe as well as in the EPO’s strategy for ‘raising the bar’. Under these circumstances, it is questionable whether it is really more patents that we need in Europe. There is ample evidence that too many patent rights, especially if they only protect incremental improvements or trivial solutions, can hinder competition and stifle innovation.” “When setting the level of fees for the Community patent, it should be ensured that the overall cost of the Community patent should be proportionate to its geographical coverage. This is how best we can avoid an artificially high demand for Community-wide protection. This corresponds with Hungary’s consistently held view that renewal and other fees for Community patents would not just be there to cover the running costs of patent offices but they should also serve and follow important innovation and competitiveness policy objectives, as they constitute the ‘price’ of obtaining and maintaining a monopoly on the market of (currently) 27 Member States. These objectives certainly include the promotion of patent activities by SMEs and we may have to look for SME-specific incentives rather than for a general (and unjustified) lowering of the fees for the Community patent. In general, we cannot accept that, for whatever reason, the study uses working hypotheses under which the renewal fee for the Community patent would correspond to the sum of the renewal fees for 2, 4 or 6 countries. It is difficult to see why one should be able to maintain a monopoly right in 27 countries for a price that one previously had to pay for only a couple, or handful, of countries. In addition, the relevant economic literature suggests that it is not the level of fees that really drives or discourages patent filings. The perception of high patent fees does not really translate into the actual behaviour of firms. In other words, the firms that criticise the high level of fees are often those with large patent portfolios.” “The study is almost exclusively based on a single, fundamental presumption and it seems to give it excessive weight. It presumes that, just because the Community patent would cover a bigger market, there would be a much bigger demand for that patent and it would be maintained longer than currently the European patents. However, this presumption takes no account of the fact that the maintenance rate (or: the actual term of patents) largely depends on the technical field to which the patent belongs. The relevant statistics of the Hungarian Patent Office clearly show that patents are actually maintained much longer in the pharmaceutical sector than, for instance, in the field of information technology. This is unlikely to change even with the introduction of the Community patent. Furthermore, a number of studies show that it is not only the targeted but also the applicant countries’ size and wealth that matter. So, the number of inhabitants and the GDP per capita of the country of the patentee influence validation (and maintenance) behaviour at least as much as those of the targeted market. In addition, the geographical distance between the two countries (or markets) concerned constitutes another influential factor, too”. Hungary’s comments, op. cit. (50), pp. 1–2.
Article 9(2), UPP Regulation, op. cit. (16).
Recital (21) and Article 13(2), UPP Regulation, op. cit. (16). Some of the underlying considerations were explained in some detail in the above-mentioned paper submitted by the Hungarian Government in response to a study on the economic aspects of the Community patent: “It should also be studied to what extent “ordinary” European patents would co-exist with Community ones in the individual Member States. In view of the fact that, at present, almost all European patents are validated in Germany, France and the UK, while only a small portion of them take effect in smaller EPC contracting states, it can be relatively safely presumed that, even after the creation of the Community patent, more European patents would continue to be validated in the former than in the latter. In other words, those interested in obtaining patent protection in smaller Member States will exclusively choose the Community route and these States will loose their entire income from the renewal fees for European patents. This certainly calls for the introduction of some balancing criterion to be applied in the distribution of renewal fees for Community patents. The distribution key of the renewal fees for Community patents should be defined in a way that would contribute to the reduction of current disparities in innovation and patenting levels in different Member States. The distorting effect of the varying ages of EPC membership would also have to be offset. Countries that joined the EPC in 2002–2003 or even later would otherwise be discriminated against, as the first validated European patents only took effect in them in or after 2006–2007 and the life-cycle of those patents would only be completed only around 2022–2023 or even later. It is therefore clear that new and relatively small EPC contracting states with a lower level of patenting activity would be put at a serious and unjustified disadvantage if the current share of the renewal fees from European patents were given as much weight as proposed.” Hungary’s comments, op. cit. (50), pp. 2–3.
Draft statement to be entered in the minutes of the Council by the participating Member States concerning the share of distribution of renewal fees for European patents with unitary effect, dated 14 November 2012.
Article 9(2), UPP Regulation, op. cit. (16).
Recital (21), UPP Regulation, op. cit. (16).
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This article is based on a presentation given at the conference The Creation of Unitary Patent Protection in the European Union organised by ERA on 29–30 November 2012 in Paris.
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Ficsor, M. Coexistence of national patents, European patents and patents with unitary effect. ERA Forum 14, 95–115 (2013). https://doi.org/10.1007/s12027-013-0294-z
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DOI: https://doi.org/10.1007/s12027-013-0294-z