What's the UPC's status today..by HOYNG ROKH MONEGIER associates Maïlys Sahagun and Margot Van Meerbeeck

1. UPC – State of Play
IP Meeting 21 December 2017
Brussels
Maïlys Sahagun & Margot Van Meerbeeck
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2. 1. “European patent with unitary effect”
• 1 granting procedure
• 1 patent for 25 Member States
• 1 renewal fee
• 1 (additional) translation
2. Unified Patent Court (“UPC”)
• Court with jurisdiction for 25 Member States
The Unitary Patent package
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3. Specialized court with exclusive competence over
i. European patents,
ii. European patents with unitary effect
iii. SPCs issued for a product covered by such a patent
and
iv. European patent applications.
It has territorial jurisdiction over 25 Member States
(Spain, Croatia, Poland)
Unified Patent Court
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4. + Foreseeable patent environment
+ Exclusive competence on validity and infringement, no
more fragmented litigation
+ Judgment in reasonable timing
+ Preliminary injunction: territorial coverage
+ Territorial coverage: effective throughout all member
countries
+ Cost efficiency
+ Reduction of red tape
+ Better business opportunities (encourages cross-
border trade)
+ Quality of the UPC judges?
- Will anyone use
it? Depends on
industry
- Neutrality of UPC
judges?
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Pros and Cons
± UP system is easier for patent trolls?
± SMEs?
± One basket syndrome (central validity attack):
depends on strength patent

5. Structure (1)
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6. Structure (2)
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7.  Unified Patent Court Agreement (“UPCA”)
 Protocol on Provisional Application (“PPA”)
will allow the provisional application of the institutional,
financial and administrative provisions of the UPCA and will
enable the necessary legal and practical arrangements to be
made in contemplation of the establishment of the UPC,
including the appointment of judges.
 Protocol on Privileges and Immunities of the Unified
Patent Court (“PPI”)
will provide the UPC the privileges and immunities necessary
for the exercise of its official activities in the territory of each
State Party.
Legal Instruments
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8. • 14 Member States have
ratified the UPCA.
• Germany, the UK, Latvia
and Slovenia are currently
in the process of ratifying
it.
UPCA - When?
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Entry into force 4 months after 13 Member States, amongst which
(mandatory) France, Germany and the UK, have ratified

9. • 10 Member States have
approved or declared to
be bound
• 2 Member States +
Germany left
PPA - When?
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Entry into force after 13 Member States, amongst which (mandatory) France, Germany
and the UK, have ratified, or informed the depositary that they have parliamentary
approval to ratify, the UPCA and have approved the PPA or declared that they consider
themselves bound by it.

10. • Only the Netherlands
have ratified.
• France and Luxembourg
are currently in the
process of ratifying it.
• The UK has linked the
ratification of the PPI to
the ratification of the
UPCA.
PPI - When?
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Entry into force 30 days after the last ratification of the four State
Parties – France, Germany, Luxemburg and the UK

11.  Provisional application phase – 6 months
→ Allows for practical set up of the Court e.g. recruitment of judges,
testing IT, etc.
 Sunrise period – last 3 months
→ Patent holders can start opting out (withdraw patents from the
exclusive jurisdiction of the UPC)
 Transitional period – 7 years after entry into force UPC
→ Shared jurisdiction with national courts over actions of
infringement and revocation of EU patent, regardless of opt-out
Timeline
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12.  Brexit referendum of 23 June 2016
 EU competitiveness Council of 26.11.2016
UK will ratify - “The UPC itself is not an EU institution, it is
an international patent Court.”
 Deposit of the instrument for ratification expected
in April 2017 BUT announcement of elections
 Deposit expected early 2018
Hindrances: Brexit (1)
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13.  UK process for ratification of UPCA: 2 statutory instruments
need to be approved first by the Parliament and then by the
Privy Council
a. England, Wales, Northern Ireland: still need to be approved
by Privy Council (next session February 2018)
b. Scotland: OK
→ Ratification likely to happen before Brexit (March
2019) but UPC will probably enter into force AFTER
Hindrances: Brexit (2)
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14.  Legal issue: Can non-EU members participate in
the system? How?
• Different legal approaches: Minimalist – Moderate – Maximalist
• But all agree that it is legally feasible.
“If there is a will there is a way”
Hindrances: Brexit (3)
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15.  Bundesrat passed the relevant UPC legislation
on 31 March 2017.
 Complaint against ratification bill by Dr Ingve
Björn Stjerna (attorney) before the Federal
Constitutional Court.
Hindrances: Germany (1)
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17.  On 4 April 2017 the German President
suspended the deposition.
 Constitutional Court invited i.a. the Federal
Government, the German Bar Association,
EPLAW, EPLIT, BDI and GRUR to comment (27
invitations).
 Deadline extended: end of December 2017
Hindrances: Germany (2)
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18.  Grounds for the Challenge
• German constitutional law: a transfer of sovereign
powers to European institutions must be decided by a
qualified majority of 2/3 of Bundestag and Bundestrat;
• CJEU should have a greater role since the UPC will, at
least in part, apply harmonized European law  UPCA
will become a quasi-legislator;
• UPC does not comply with requirement set by CJEU
after complaint by Spain and Italy;
Hindrances: Germany (3)
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19. • EU as a political institution should have been more
involved when setting up UPC ( lack of democratic
legitimacy);
• Language regime can be unfair to SME’s because
infringement proceedings in one language and nullity
claims (counterclaims) in another;
• Major issue regarding judges’ independence:
appointed for 6 years by Administrative Committee
sitting with attorneys. Then reaffirmed after 6 years
by the same committee…
Hindrances: Germany (4)
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20.  5/6 months for initial decision on permissibility of
case: June 2018
 If allowed, hearing 6 months later: December
2018
 Referral to CJEU means additional 2 year delay
 End 2020
Hindrances: Germany (5)
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21.  Irish referendum on Unified Patent Court
 Hungarian constitutional complaint by
Ministry of Justice
Hindrances: more!
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22. Conclusion
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23. Thank you!
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