Saturday, 17 September 2016

Should the UK ratify UPC (yes): can it continue post-Brexit (yes)

We are in a critical position concerning the unified patent court and unitary patent.

Netherlands has deposited its instrument of ratification, and agreement to ratification has passed the  Italian Chamber of Deputies. There is thus considerable momentum towards getting the Court established, and the question that is being asked is whether the UK and Germany (necessary signatories for the agreement to come into effect) will ratify.

Even on UK departure from the EU, continued participation by the UK is both legally feasible and practically desirable provided there is good will from the rest of the EU: and this is confirmed by the recently published opinion of Richard Gordon QC and Tom Pascoe of Brick Court Chambers a copy of which is available here.

In summary, this opinion states that for the UK to continue post-Brexit a number of criteria would need to be met. None of the legal criteria are insuperable.

In summary, quoting the main conclusions:-

The UK may only continue to participate in the unitary patent by entering into an international agreement with the EU and Member States.

Such an agreement is not necessary for the UK to ratify now: only for the UK to remain a participant post-Brexit. With appropriate political will and legal care, this is feasible.

It would be constitutionally possible for the UK to continue to participate in the UPCA after ‘Brexit’, so long as it signs up to all of the provisions of the Agreement which protect EU constitutional principles.

Were the UK to enter an EEA type agreement, this would be necessary in any case. If the UK were part of an international agreement it could withdraw at any time if this posed a practical problem.

UK divisions of the UPC would have to cease operating if the UK ratified the UPCA, without amendment, and subsequently left the EU. In those circumstances, it would be necessary to adopt detailed transitional provisions in order to protect accrued rights and to regulate the position of litigants with pending proceedings.

The detail of these provisions need not be very detailed. For example, should such a withdrawal arrangement not be achievable, the UK need only provide that:-
·         no person loses patent rights in the UK through UK withdrawal (e.g. for unitary patents in force at the time of withdrawal it could be provided that a European (UK) comes into existence in its place);
·         the result of litigation concluded before the UPC will be respected;
·         litigation already underway in the UPC at time of withdrawal would be dealt with (most simply by providing that it continue before the UPC and the result be respected (including for any new European (UK) that came into existence)).
In such circumstances it cannot be doubted that the remaining member states would make similar provision to ensure that there was no loss of rights in either direction.

The opinion of course said that nothing was certain (eminent QCs do not become eminent QCs without being prepared to consider they may be wrong - even if this is a low probability); and that the CJEU has the power to find otherwise, although no reason is given why they would find otherwise. Indeed the opinion implies that if the CJEU did find otherwise, the legality of other multilateral agreements might come into doubt (e.g. European Common Aviation Area Agreement, the International Tribunal for the Law of the Sea, and the EFTA Court).

In short, UK participation post-Brexit is eminently feasible, if politically desired. The extent of political desire of course depends on political circumstances.

While the UK is in the EU and honouring its EU obligations, ratifying is both possible and desirable: but this is a dissipating opportunity. The longer the delay, the less goodwill there will be for reaching a solution that includes the UK.

If the UK government is interested in promoting UK industry as a whole, then prompt ratification makes sense, both short term and long term.

Of course, those with a vested interest in complex and expensive litigation (large companies seeking to steamroller smaller ones by pushing up cost; some lawyers who thrive in making matters difficult so as to justify high costs; those whose jobs rely on making matters more difficult than they need be) will oppose this.

Some of these opponents may argue that delay will strengthen the UK’s negotiation position post-Brexit, despite the undoubted case that the longer the delay the less goodwill will be present to reach a conclusion including the UK. This argument for delay is self-serving nonsense. and should not be allowed to impede introduction of a system that will be to the benefit of industry in the UK, Europe at large, and the World.


So yes please HMG - ratify the UPC, and ratify in 2016.


Thursday, 1 September 2016

European Patent Grants - update

In a previous post I commented on the high number of patent grants at the EPO during the first 6 months of 2016.

Patent grant numbers at the EPO continue to rise, with over 9,800 granted in August alone.

On the current basis my best guess for grants during 2016 would be around 93k ± 5k.






Saturday, 25 June 2016

Brexit and IP

In case you have not noticed, there has been a referendum in the UK voting to leave the EU.

This only has effect once an Article 50 TFEU notice is given. It is to be hoped that a reasonable breathing space is given before the Article 50 TFEU procedure commences.

In this respect it should be noted that the referendum is not binding, and the decision has to be made by the UK Government.

The majority for leave was slim 17,410,742 to leave, 16,141,241 to remain.

There are many reports of leave campaigners regretting their decision on the basis that "I didn't think it would happen and just wanted to kick the politicians".

There is a petition to the UK Government seeking a second referendum.

Such petitions are not binding, but it is noteworthy that, at the time of writing, there was around 2.4m signatories and the number is increasing at around 2000 signatories a minute.

On the fanciful hope that this rate of signature continued, by Friday  there would be more signatures for a second referendum than votes for leave. For the current number of signatories, look here.

Regardless of whether this figure is reached, Parliament has a difficult decision ahead of them.

As a Londoner with an internationalist outlook, all I can do is hope that Parliament remembers they are a representative body, and not a body of delegates, and that they think hard before agreeing to an Article 50 TFEU notice.

The prospect of further fissiparous fucking off as Scotland, Northern Ireland and London decide their interests are not those of their fellow countrymen is just too dispiriting.

Not a lot above about statistics (other than counting signatures) or IP (but Brexit would have an effect).



Wednesday, 15 June 2016

How high will the ball bounce?

The hockey stick graph is a familiar issue in climatology. A sudden step change in a measured variable indicating something happening in the background. Are we witnessing a hockey stick phenomenon at the EPO?

The graph below shows the number of B1 publications (grants) from the beginning up to 15th June of the stated years 2008-2016.  As can be seen, these have been in the region 21,000 to 30,000 from 2008-2015, but increase dramatically (to over 41,750) in 2016. This looks like a hockey stick graph to me.



Also shown is the total number of grants from 2008 to 2015, which can be seen to roughly reflect what happens in the first part of the year.

Applying some rough and ready guesswork, one can guess a total number of patents granted in 2016 as in the region 88,000 to 102,000 representing an increase of 29-49% in the number of grants over 2015.

What is  happening in the background that explains this sudden increase?



Tuesday, 7 June 2016

But is it appealing?

A proposal to increase the appeal fees at the EPO has received recent comment on IPKat.

It is interesting to see the effect the last big increase in appeal fees (a 50% increase as of 1st April 2014) had on appeal behaviour.

From the Annual Reports of the Boards of Appeal one can derive the following table of appeals filed:-
  Year
  2009 2010 2011 2012 2013 2014 2015
ex parte appeals filed 1226 1241 1310 1242 1200 996 864
inter partes appeals filed 1249 1301 1347 1360 1315 1357 1523








This shows that the increase in fees has dramatically affected ex parte appeals, with appeals before the increase averaging at about 1200 a year and in the first full year after the increase amounting to only 864 appeals (a 28% decrease).

The increase in fees has affected inter partes appeals less, with the number of appeals in opposition roughly tracking the number of grants (roughly 2.5% of grants end up with an appeal in opposition).

If a mere 50% increase in appeal fee has resulted in such a drastic change in applicant behaviour, what effect might the huge proposed increase have?

It is to be hoped that the Administrative Council will recognise that an effective appeal system is essential to maintaining quality at the EPO, and will not increase the appeal fee [at all].






Sunday, 13 March 2016

Best year ever, concentration, and the future

It is time for EPO statistics to come out again, and for once (even without PR spin and puff) they include the slightest indication that bad times may be behind us.

Best year ever


The number of applications was the highest ever - but don't get too excited yet.

Years in which the number of applications was not the highest ever were:-

  • 1991-95 [when panic led to a drastic lowering of fees  (yes, prices can go down as well as up)], 
  • 2002 [when dot-com dot-bombed], 
  • 2009, 
  • 2011-2013.

Why not 2010? Well that was the spike in divisional applications when things went mad for a while.

In other words "best year ever" claims should be expected in a time of growth . What had impressed until recently was stagnation in applications.

Similarly grant numbers have gone up. Grants are not keeping pace with applications however.



So we have a slight kick in the number of applications, and in recent years an increase in the number of grants (when demand is static increased efficiency should translate as more grants). What happened to grants in 2000? Strikes.

The Early Certainty from Search program may have something to do with the high grant numbers. This coming year may show whether re-organising Examiner desks has resulted in higher efficiency to grant (or refusal).

Concentration


I commented in 2014 on how much of the Netherlands’ European patent applications were represented by Philips.

This year Philips account for nearly 34% of the Netherlands patent applications. Looking outside the Netherlands this year's statistics show how concentrated applications are from some countries:-

Country/ region
Total European/ Euro-PCT applications
Top 1 applicant in region
Top 2 applicants in region
Applications
% of total
Applications
% of total
EPC
76097
2,402
3.2%
4,296
5.6%
US
46292
1,869
4.0%
3,574
7.7%
JP
21426
1,034
4.8%
1,909
8.9%
KR
6411
2,366
36.9%
4,457
69.5%
CN
4680
1,953
41.7%
2,823
60.3%

One would expect the EPC states to be less concentrated, as SMEs file predominantly in their own region rather than abroad.

What is interesting is how much of Korean and Chinese filings depend on so few companies. Korean concentration is understandable given the predominance of the chaebol, but the concentration of Chinese applicants in so few hands (and those in information and communications technology) show how little engagement Chinese industry as a whole has with the rest of the world - at present.

The future

It is still too soon to suggest that the unitary patent had any effect beyond marginal in European applications in 2015: most applicants do not look that far ahead.

However, unless Brexit spoils everything, there is a reasonable expectation that applications could soar over the next 2-3 years.



Saturday, 30 January 2016

Diatribe

The following rant is a result of sheer frustration about the UK approach to implementing the UPC and UP..

What does the EPC say about patent scope and infringement?


The EPC states that infringement is determined under national law, and that (subject to specific exceptions) national and European patents shall have the same extent.

Article 2(2) EPC
(2) The European patent shall, in each of the Contracting States for which it is granted,  have the effect of and  be subject to the same conditions as a national patent granted  by  that  State, unless this Convention provides otherwise.

Article 64 EPC
1)      A European patent shall, subject to the provisions of paragraph  2, confer  on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State  in respect o f which it is granted, the same rights as would be conferred by  a  national patent  granted in that State.
2)      If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by  such  process.
3)      Any infringement of a European patent shall be dealt with by national law.

So the scheme of the EPC is that European patents shall have the same effect as national patents except that where national law does not provide for the direct product of a process to be infringing, an EP patent shall cover such product.

The only other discussion of infringement in the EPC appears to be Article 70(4)(b) EPC concerning what happens if there is a defective translation:-

Article 70(4) EPC
4) Any  Contracting  State  which adopts a provision under paragraph 3:
………..                                                                               
 (b) may  prescribe that any  person  who, in that State, in good faith has used or has made effective and serious preparations  for using an invention the use of  which  would  not constitute infringement of the application or  patent in the original translation, may,  after  the corrected translation takes effect, continue  such use in the course of  his business or for the  needs thereof without  payment.

Although Article 167 EPC1973 provided for reservations in certain areas, these provisions are long time-expired and were removed with EPC 2000. EPC 2000 has no provision for reservations.

How does this affect the UK?


The UK:-
·         provides that the direct product of a process infringes national law;
·         is a London Agreement country, not requiring the provision of any translation; and
·         has never declared any reservations in relation to the EPC (when such was possible);

and so there is no scope under the EPC for UK national patents and European patents to have any different effect if the UK is be compliant with the EPC. (See at the end for an alleged argument to the contrary – it deserves its place as a footnote).

Do the Unified Patent Court Agreement (UPCA) and Regulation on the unitary patent (UPR) affect this?


The unitary patent is product of a regulation that is declared to be a special agreement under the EPC

Article 1(2) UPR
2. This  Regulation  constitutes  a  special  agreement  within  the meaning of Article  142  of the Convention  on the Grant of European Patents  of  5  October  1973,  as  revised on 17 December  1991 and  on  29 November  2000 (hereinafter ‘EPC’).
and the regulation recognises that the Contracting States have obligations under the EPC
Article 9(2) UPR
2. The participating Member States shall ensure compliance with this Regulation in fulfilling their international obligations undertaken in the EPC and shall cooperate to that end.

The UPR thus imposes additional obligations on the Contracting States (to comply with the Regulation) while not relieving them of the burden of fulfilling their obligations under the EPC.

The UPCA takes as a basis that all Contracting States have ratified the EPC (3rd recital) and includes the EPC and national law as sources of law. The UPC contains a comprehensive code for infringement of both European patents and European patents with unitary effect.

Neither the UPCA nor UPR provide any indication that a national right shall have any different scope from a European patent (unitary or otherwise).

Neither the UPCA nor UPR provide any indication that a European patent with unitary effect shall have any different scope from a "bundle" European patent.

Article 30(2) Vienna Convention on the law of treaties states:-

2. When a treaty specifies that it is subject to, or that it is not to be considered as incompatible with, an earlier or later treaty, the provisions of that other treaty prevail.

Which, given the acknowledgement of the EPC in both the UPCA and UPR, indicates that the terms of the EPC are not overruled by the UPCA or UPR.

Thus, where there is an interpretation available that is in accordance with the EPC, UPCA, and UPR it is to be preferred to one which ignores fundamental principles of the EPC.

Further, it could be argued that compliance with obligations under the EPC (where not repugnant to the UPR) will become part of EU law once the UPR is ratified.

What does the draft statutory instrument (SI) on implementing the UPCA and UPR say?



The SI does not take the approach of adopting the infringement provisions of the UPCA wholesale but instead seeks to modify (with little success) the wording of section 60 of the UK Patents Act to various extent.

·         s.2 (3) of the SI amends section 60 to add in exceptions to infringement of Articles 27(c) and 27(k) UPCA;
BUT
·         s.2 (4) says the Article 27(k) UPCA exception does not apply to national patents.

In Schedule A3 of the SI
·         s.1 and s.2 says section 60 is a “relevant statutory provision”
·         s.3 says the relevant statutory provisions apply in relation to a European patent with unitary effect in the same way as they apply in relation to a European patent (UK); but
·         s.4(10) says that for the unitary patent only, in s. 60  “references to the United Kingdom are references to the territory of a Contracting Member State in which the European patent with unitary effect has effect;”

So we have three laws of infringement (at least – see below):-

  1.        National law [S.60 as amended absent the Article 27k UPC exception]
  2.        European patent (UK) law [S.60 as amended, with Article 27k UPC exception, and with contributory infringement assessed on the “old” basis of both supply and use being required to be in the UK
  3.        European patent with unitary effect law [S.60 as amended, with the Article 27k UPC exception, and with contributory infringement assessed on Article 26 UPCA criteria of supply and use “within the territory of the Contracting Member States in which that patent has effect” being required]




Article 27k UPCA exception applies?


Yes
No
Expanded territorial scope for contributory infringement?
Yes
European patent with unitary effect

No
European patent (UK)
UK National patent

Effect of the SI


If the SI is accepted as is, the consequences are significant.

Legal advice

In assessing the legal position in the UK, three different laws of infringement will need to be considered whereas at present there is only one. Giving advice on a pending application will require two opinions, one on the basis that any patent granted goes ahead as a unitary patent, and another on the basis that it proceeds as a “bundle” patent.


Disharmonisation

Many are trying to harmonise IP provisions on a wider than European front. If the UK falls back from harmony within Europe then the scope for harmonisation and the prospect of lower costs recede into the far distance.


Distrust

If the UK cannot follow a treaty it has held to for around 40 years, how can it be trusted in anything else?


Legal action

The proposed SI introduces a law contrary to the EPC, so opening up the dispute procedure of Article 173 EPC. It is a reasonable bet that any such dispute would result in judgment against the UK.
Failure to comply with the EPC may also be failure to comply with the UPR.


Inconsistent legal decisions

It is open to question whether the UPC would decide a question of contributory infringement by a UK company of a “bundle” patent in the same way as a UK court would. The risk of different legal outcomes depending on which court was seized with a particular case would be both legally uncertain and provide scope for forum shopping.


Arguments as to why the SI is permissible


An alleged argument is that:-

Article 142 EPC states that:
(1)  Any  group of Contracting States, which has provided by  a special agreement that a European patent  granted for those States has a unitary  character throughout  their territories, may  provide that a European patent may  only be granted  jointly in respect of all those States.
(2) Where any group of Contracting States has availed itself of the authorisation given in paragraph  1, the  provisions of this Part shall apply.
“This part” being part IX of the EPC, which comprises Articles 142-149a.

Article 149a EPC states that:-
      Nothing in this Convention shall be construed  as limiting  the right of some or all of the Contracting States to conclude special agreements on any  matters concerning European patent applications or European  patents  which under this Convention are subject to and governed by  national  law…

and lists a number of administrative examples.

Infringement is a matter for national law (Article 64(3).

And so arguably it should be considered that in amending the provisions applicable before the UPCA (under Article 149a) there is no requirement to amend national provisions. As for the different territorial scope of contributory infringement for European patents and unitary patents, that reflects the difference in nature between a unitary right and a non-unitary right.

This argument:-
·         ignores the specific wording of the EPC in Articles 2 and 64 EPC;
·         interprets Article 64(3) EPC as permitting something directly inconsistent with Article 2 EPC;
·         expands Article 149a to permit changes in national law to overrule the EPC.


In short, it is nonsense. 

What can be done?


Hope that someone in the UK is listening and hope that someone sees sense. 

Otherwise, a messy situation will follow.