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Impending Coming Into Force of the Agreement on Unified European Patent Court, Petre Ohan

  1. On January 11th 2023, 10 years have passed since The Agreement on Unified Patent Court – UPCA (in romanian Acordul CUB) was published in Bruxelles with no. st16351/12. The agreement was signed in February 19th 20131, by 25 EU member states (excepting Spain which opposed the agreement due to linguistic reasons, and Poland which adopted a wait-and-see policy). At that time, Croatia was not yet a EU member state, but it didn’t signed UPCA until now.

Since July 20th 2020, after BREXIT, the United Kingdom which already signed and ratified UPCA, withdrew its ratification.

After coming into force of UPCA, according with the legal regime post-granted, requested by the holder and admitted by EPO, an european patent will be treated as:

  • classic european patent, marked as EP (I should recommend EPN, with N coming from national treatment of EP post-validation), or
  • an european patent with unitary effect, briefly unitary patent, marked in context as CBE, UP, I should recommend EPU.
  1. Till the end of 2022, UPC/CUB Agreement was ratified by 16 EU member states (including FR and IT), and according with art. no. 89, it can come into force in June 1st 2023, if Germany fills the ratification instrument till the end of February 2023.

In August 2021, Germany official ratified the UPC Agreement, thus on January 19th 2022 came into force the protocol for provisional application of The UPC Agreement, followed by the first UPC Council in Februray 22th 2022, opening the way for the Agreement to come into force, possibly at the beginning of June 2023. Under UPC system, Germany will host four local divisions (Düsseldorf, Munchen, Mannheim and Hamburg) and a subsidiary of the central division2 to Munchen. Filling of the ratification instrument by DE3 is awaited.

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1 Bulgaria joined to signatories on March 5th 2013.

2 Based in Paris.

3 Germany will fill the ratification instrument when the necessary conditions for UPC institutions to be operational will be met. Regarding this aspect, in January 19th 2023, The Unified Patent Court announced the appointment of the registrar and of the deputy registrar (the procedure rules of UPC were adopted; the UPC judges were appointed, the Presidium was formed, and both presidents of Court of Appeal and of Court of First Instance were elected and took up their duties before the end of 2022).

  1. Till now, the following EU member states ratified the UPC Agreement:
  2. The core UPC countries: DE, FR, and IT,
  3. The scandivanian countries: SE, FI, DK;
  4. Benelux: BE, LU, NL;
  5. The baltic countries: EE, LT, LT;
  6. The other states: Austria- AT, Portugalia- PT, Slovenia- SI, Bulgaria- BG, and Malta- MT.

Regarding the location of substantive courts and of the other UPC institutions, I want to make the remark that Slovenia houses at Ljubljana a local division (of the First Instance), and a mediation and arbitration center, unlike Bulgaria which does not host any of the UPC institutions.

  1. The official site of Unified Patent Court announced on December 5th 2022 a two months delay of “sunrise” launch period, which thus will begin on March 1st 20234, followed by coming into force of the UPC Agreement on June 1st 2023. The two months delay is intended to allow the future UPC’s users to prepare with necessary means and trainining regarding strong authentication procedures in order to access The Case Management System- CMS and for electronic signature of the documents. “Users must be equipped with both client authentication (a hardware device) and a qualified electronic signature”.
  2. The providers for authetification means in Romania are:

Alfa Trust Certification SA,

CENTRUL DE CALCUL SA,

CERTSIGN SA,

Digisign SA,

Serviciul special de telecomunicații and

Trans Speed SA.

  1. Romania together with 6 other signatory states (IR, GR, CY, HU5, CZ and SK) remained with the status of a signatory country. The UPC Agreement provisions are not applying to them and consequently neither do the provisions of EU  

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4 From this date, the delay requests may be filled to EPO until after June 1st 2023, a decision to grant EP to allow the applicants to opt for EPU, according to EPO guide at the address

https://www.epo.org/applying/european/unitary/unitary-patent/unitary-patent-guide.html.

5 Although Hungary did not ratified the UPC Agreement, it hosts the only Training Center within UPC, which make it possible to exert pressure for ratification. A training program for UPC judges took place at the center in Budapest during January 17-21th 2023.

Regulation no. 1257/2012 regarding consolidated cooperation in the art of patents and EU Regulation no. 1260/2012 regarding the language regime applicable to patents.

  1. Romania, until a possible future ratification of UPC Agreement by our country, it follows that, for the patents granted by EPO, validation, maintaining in force and capitalization of EP should be done as before, as a national RO/EP patent, even if the holders requests to EPO for application of the european patent status with unitary effect EPU.

But a close connection with CNCPIR and OSIM is required in order to be aware of Romania’s steps in this regard and for a prior preparation in case the ratification will be decided.

  1. As a result, even if a RO/EP patent holder will not fill an opt-out request for EP patent and the european patent will bear amendments or even its cancellation in UPC Courts, the final decision of UPC Court will not affect the the same patent validated in RO/EP Romania, unless a similar action or exequatur will be conducted to competent courts in Romania. Or, in other words, UPC has no jurisdiction over RO/EP patents.

II. Taxes/Costs

  1. To maintain in force an unitary patent, the patent holder will have to pay to EPO, in EUR, a single renewal fee for each year that he wants the EPU to be in force in all the member countries of the UPC Agreement. While, for classic european patents, the regime remains unchanged.

The level of annual fees for maintaining in force of a unitary patent for ten years, which is the mean actual lifetime of a unitary european patent – EPU amounts less than 5,000 EUR compared with about 26,000 EUR paid for maintaining in force of a EPN in 24 states. And for the maximum lifetime of a patent of 20 years,

the fees amounts 35,555 EUR for an EPU, compared with about 150,000 EUR for an EPN.

Details regarding comparative annual fees, for the whole validity period can be seen at https://www.epo.org/applying/european/unitary/unitary-patent/cost.html.

With the clarifications that only the fees for EPU are the real ones, but the comparisons taken from EPO site are not relevant because:

  • only 2% of EP holders validate their patents in all the EU member countries, and currently only 17 EU member countries ratified The UPC Agreement;
  • about 8% of EP patents validate their patents in more than 13 EU member countries,
  • about 40% of EP holders validate their patents only in 5 EU member countries, and
  • about 50% of EP holders validate their patents only in 3 EU member countries.

From the above, it follows that for EP holders who validate their patents in less than 6 countries, the EPU status is not more advantageous.

In addition, failure to pay an annual fee for an EPU leads to the holder’s loss of rights in all the member countries of the UPC Agreement, while in the case of EPN, the holder can decide every year, in which of the countries the patent is valid, he still wants to pay the annual fee for maintaining in force.

  1. Fees at UPC Courts

Court fees for a revocation action in UPC, according to the current fee scale proposal, amounts to 20,000 EUR (fixed fee). For a counterclaim for revocation, the fee is the same as for community law infringement, with a fee limit of 20,000 EUR. The maximum limits for recoverable attorneys’ fees are between up to 38,000 EUR (dispute value up to 250,000 EUR) and up to 2 millions EUR (if the dispute value is greater than 50 millions EUR).

Proceedings in UPC Courts (taxes + fees) involve very high expenses for possible litigants in Romanian proceedings. This is all the more so since the proceedings in the first instance will take place at the central division or its subsidiars.

Also, the deadlines strict regime in UPC proceedings for possible litigants in Romania would be difficult to fulfill.

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