Member Article

Technology-rich South African companies and indeed inventors who have taken the brave step of filing foreign patents -will know that there are two ways of getting patent protection in Europe. The first is the national route, in other words filing a patent directly in the country or countries of interest. The second route is that of the European Patent. But they will also know that  the name is slightly misleading,  in that a European Patent is not a Europe-wide patent, but rather a way of getting national patents through a single authority,  the European Patent Office (EPO) in Munich - the patentee  simply decides in which  European countries it wants (or can afford)  protection and in which it doesn’t.  The European Patent is therefore a bundle of national patents which are enforced by the relevant national courts. The European Patent is cumbersome and expensive, and it can lead to inconsistencies when national courts interpret the same patent in different ways.  The system lends itself to forum shopping.  

The Europeans have been talking about creating a genuine Europe-wide patent since the 1970s, but it was always held up by two variations of the issue that most divides Europeans, language: firstly there was a dispute about the official languages of the new system (the Italians and Spanish wanted their languages to be added to English, French and German); and secondly there were issues around the high cost of translating patents into the languages of all the EU countries.

These issues have now been resolved and as of 2014 (we believe!) there will be two major developments. The first is that there  will be an  EU Patent, in other words a patent  that automatically covers, and is enforceable in, all the countries of the EU (in order to avoid confusion with the European Patent, I’m going to refer to the EU Patent as the Unitary Patent). A list of the 27 EU countries appears at the foot of this article, but I should mention that there is some uncertainty as to whether all of them will join the system – there was initially some talk of Italy and Spain opting out because they were irritated that their languages hadn’t been added to the list of official languages, although more recent reports suggest that Bulgaria, Poland and Spain failed to sign on the dotted line a few weeks back. Bulgaria was expected to rectify this shortly). 

The Unitary Patent won’t replace the national system or the European Patent system, it will simply operate alongside them. In fact, the Unitary Patent  will be administered by the EPO in Munich, and the patentee will in future have the choice of either selecting and paying for specific countries (as happens now), or of covering the entire region through a Unitary Patent. It will, in fact, be much cheaper to seek a Unitary Patent than getting patents in the countries through a European Patent, and it is hoped that the Unitary Patent will help small to medium sized companies who are often put off by the high cost of patenting. The official languages of the Unitary Patent will be English, French and German, although seems that there may be some sort of transition period during which the patentee will  still have to file translations. 

So why would anyone go for filing anything other than a Unitary Patent? Well, there may be very good reasons.  One of these is that, because of its unitary nature, the Unitary Patent can be cancelled by way of a single legal attack – in the case of a European Patent that covers multiple countries, multiple attacks will be required. Another consequence of the unitary nature it that a Unitary Patent can only be transferred or licensed for the entire EU.  These are serious issues that patentees will need to consider in future!

The second major development is the establishment of a single dedicated patent court for the entire EU, which will be known as  the Unified Patent Court (UPC). This court will have exclusive jurisdiction over any European patent litigation, including litigation involving Unitary Patents and patents granted under the European Patent system. There will be a court of first instance which will be based in three centres – London for cases relating to  patents in the sphere of  chemistry and life sciences, Munich for mechanical engineering patents,  and Paris for all other patents.  There will also be an appeal court based in Luxembourg.  There will be a five-year period for instituting actions (prescription period), and the UPC will be able to award damages and make costs awards up to a predetermined level. It’s hoped that this single court will bring down the high cost of patent litigation. Once again there'll be a transition period, and for seven years owners of European patents which are in force when the new system comes into effect will have the right to litigate in national courts instead of the UPC.

These developments will have significant implications for South African companies and inventors, and they should probably already start thinking about how they’re going to deal with Europe, as a commercial point of interest, in future. Having said that, we do understand that these proposals still need to be ratified by at least 13 EU member states, including the UK, France and Germany, and experience tells us that these things are never as simple as they seem. We’ll keep you posted!

EU member countries – Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland,  Portugal, Romania, Slovakia, Slovenia,  Spain, Sweden and UK.

ELAINE DE BEER: Patent Attorney in ENS’ IP Department ([email protected])