Thursday, 23 July 2015

The Unified Patent Court and pay-to-opt-out: a critical analysis

If only it were so easy!
From our friend and German intellectual property attorney Ingve Stjerna comes information that he has now had the chance to take a closer look at the planned fee for an opt-out from the competence of the Unified Patent Court; he has thoughtfully summarised his findings with regard to the proposal's legality in "“Unitary patent” and court system – Urgently needed: A legal basis for the opt-out fee", a highly readable four-page paper which you can read in English or in German.

What is the outlook for European patent litigation in light of the planned fee structure? Ingve explains:
The approach of trying to foster the adequate utilization of a newly created court system by making the use of a concurrent judicial competence dependent on the payment of a fee does not really show great trust and confidence of the Contracting Parties as to its expected acceptance. Vice versa, this feeds and increases the skepticism among the users.

This approach becomes fully bizarre as regards patents and patent applications which were granted or applied for prior to the entry into force of the UPCA and thus at a time at which the new court system which they are now meant to be subjected to retroactively, has not even been existing. Such protective rights stand under the previous regime of legal protection, this should continue to be available for them free of charge.

Already due to these manifest doubts in the lawfulness of an opt-out fee under constitutional law its collection should be abstained from entirely, all the more since the confidence in the Unified Patent Court expressed by such step would be an important signal to the user circles. However, this is not to be expected. Therefore, the constitutionality of such fee and of the Agreement purportedly providing for its collection may possibly have to be discussed in the future.

1 comment:

Anonymous said...

Here again, the eagerness of politicians to push through the UPC is clearly apparent. In order to be sure that European patents have to go through the UPC, no exception to its jurisdiction has in principle been tolerated. Realising that this might go too far, the opt-out possibility was created.

The two comments on the legality of the opt-out fee are clearly showing that such legality is missing.

Why should a proprietor pay for something he does not want? That is the same as if one would have to pay directly for public transport, even if one does not want to use it (btw everybody is paying for public transport through taxes..).

When looking at filing statistics at the EPO, in the last three years the proportion of patents coming from the member states of the EPO has gone down from 50% to 35%. Who will benefit of the UPC in the long term. Certainly not SMEs, individual inventors and universities. It is not the reduction of fees or translation costs which will really help those entities. Only help in case of litigation would really be an incentive for those entities.

In view of this figures, I'm It is to be hoped that the UPC will not be

It is to be feared that by creating the UPC, European politicians are actually helping foreign proprietors to more easily attack European industry. Have they ever thought of this?