A guide to the UPC and the UP - Flipbook - Page 12
History and Background
1-01
The creation of the Unified Patent Court (the Court) in Europe, by means of an international
treaty of EU Member States, and the Unitary patent, by means of two EU Regulations of 2012
(the first creating the European patent with unitary effect (the Unitary patent) and the second
relating to the translation regime for the Unitary patent), represents the most fundamental
change to the patent system in Europe since creation of the European patent by means of
the European Patent Convention (EPC) back in 1973. It is the outcome of a series of legislative
proposals from the European Commission which started in 2000, following the
Intergovernmental Conference in Paris in 1999.
1-02
Although the European patent has been a highly successful project, the EPC only represents
half a patent system in Europe. Following a centralised prosecution procedure at the EPO,
an application for a European patent results, after grant, in what is in effect a bundle of national
patents. The patent system in Europe as it stands requires the bringing of national infringement
actions in order to enforce a patent (be it a European or national patent) or actions to clear the
path of such a patent by means of a revocation and/or a DNI ahead of a competitive launch.
The fact that actions have to be brought at the national level leads to parallel national litigation
which has the potential to be inefficient and expensive. It also runs the risk of conflicting
decisions on the same European patent. The lack of a court to determine the infringement
and validity of a European patent in more than one country has long been considered a failing
of the patent system in Europe.
1-03
The lack of such a court has also held back the harmonisation of substantive law in Europe on
both infringement and validity despite the efforts of the national courts to take notice of and
seek consistency with the decisions of other national courts and also as regards validity, the
EPO. By contrast, the new system establishes a supranational court comprising courts of first
instance and a common appeal court. As such, it will adjudicate on the infringement and
validity of both Unitary patents and also European patents in force in the Contracting
Member States (unless they have been opted out of the jurisdiction of the Court).
1-04
The 1999 Intergovernmental Conference in Paris, with the EPO as secretariat, called
for lower translation costs and a common patent court for litigating European patents.
The former resulted in the London Protocol, an agreement on translation requirements
based on art.65 EPC, which entered into force in 2008 and the latter started the
negotiations on the European Patent Litigation Agreement (EPLA).
1-05
The EPLA was intended to be a treaty between EPC contracting states that would have
created a European patent court and judiciary for the litigation of European patents.
Negotiations were advanced, but the initiative came under pressure from the European
Commission, which had put forward its own proposals in 2000 for both a Community patent
and a Common European patent court. The European Commission argued that the principles
of the EPLA were inconsistent with the Brussels I Regulation and therefore unlawful. Further
negotiations on the EPLA eventually came to an end in 2007 although many of the features
developed for the EPLA have found their way into the UPCA.
1-06
In the meantime, the European Commission’s own proposals led to an agreement in
principle (the “Common Political Approach” of 2003). The concept of a new independent
treaty by Member States, creating a patent court for Europe was largely accepted. However,
the language arrangements for the proposed Community patent were met with serious
opposition. After several years of stalemate, the majority of Member States decided to move
forward without the countries who opposed the language arrangements, using a legislative
mechanism known as “enhanced cooperation”, which had been adopted by the EU in early
2011. The result was agreement, subject to final ratification, in February 2013, of the UPCA and
two EU Regulations the first dealing with the creation of the European patent with unitary effect
(the Unitary patent) and the second dealing with the translation regime for the Unitary patent.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 2
