Industrial Property – Patents

Law Project for ratifying the Agreement on a Unified Patent Court (UPC Agreement) and the Protocol for the interim application of the UPC Agreement

On June 23, 2017, the Romanian Ministry of Justice began public debate about the law to ratify the UPC Agreement signed by Romania on 19 September 2013 and to ratify the Protocol for the interim application of the UPC Agreement.

The UPC Agreement is part of the so-called “patent package” (agreed in 2012 by the EU countries and the European Parliament) for improving the patent system in Europe, and it includes EU Regulation 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and EU Regulation 1260/2012 that implement enhanced cooperation in the area of the creation of unitary patent protection for the applicable translations.

The UPC Agreement intends to implement a patent protection system with the following characteristics:

1. Purpose and advantages
The purpose of the entire EU “patent package” is to reduce the costs and to simplify the procedures for granting the European Patents and for the procedures governing litigation in connection with European patents. As such:
– it will be sufficient to file a European unitary patent application that will cover all the contracting states (and thus not a separate European patent application for each member state); and
– in case of an infringement of a European patent on the territory of any member states, it will suffice to file a single action with one of the divisions of the Unified Patent Court (UPC) (and thus not have to file separate actions in each member state where the infringement took place).

2. Jurisdiction of the Court and compatibility with the EU Treaties
The UPC Agreement establishes a new specialized jurisdictional system; i.e., a single, unified Patent court that will have exclusive jurisdiction in cases about European patents and European patents with unitary protection, but the court will not have jurisdiction over national patents.
o A European patent is a patent issued by the European Patent Office based on the European Patent Convention of 1973 as subsequently amended (which does not have a unitary effect); and
o A European patent with unitary effect is a patent issued based on the European Patent Convention, which has a unitary effect based on the EU Regulation 1257/2012 establishing a consolidated cooperation to create a unitary scheme of patent protection.
The specific claims included in the Court’s jurisdiction are detailed in article 32 of the UPC Agreement (i.e., infringement claims, revocation claims).
The UPC cooperates with the European Court of Justice to ensure the correct application and interpretation of EU law as for any other national court.

3. Structure of the system
The Court is composed of a Court of First Instance, an Appeal Court, and a Court Clerk.
– The court of first instance is composed of (i) a central division with the headquarters in Paris and two other sections in London and Munich, each with its own separate jurisdiction; (ii) local divisions (set up in individual Member States); and (iii) regional divisions (which can be set up jointly by Member States that do not wish to establish a local division of their own);
– the Appeal Court will be in Luxemburg together with the Court Clerk; and
– the Agreement also establishes a Patents’ Arbitration and Mediation Center with headquarters in Ljubljana and Lisbon.

4. Panels and appointment of the judges
The Court’s panels will be multinational (formed of judges belonging to different contracting states) and mixed, that is, formed of judges with juridical and technical grounding. The judges will be appointed for six years that can be renewed.
The eligibility requirements for a judge of the Court are outlined in article 15 of the UPC Agreement. To be eligible for an appointment, the candidate should have the required qualifications for appointment to a judicial vacancy in a contracting state.

5. Financial implications
The contribution (a quota of 0.38%) to be paid by Romania before and after the UPC Agreement comes into force will be determined by a Government Decision based on the number of European patents which are in effect in Romanian territory on the date when the UPC Agreement becomes effective and based on the number of European patents in connection with which claims for infringement or revocation were filed in front of Romanian courts in the last three years before the UPC Agreement becomes effective.

6. The Protocol for the interim application of the UPC Agreement
The Protocol aims to ensure a step by step transition to the operational phase of the UPC Agreement and to guarantee the good functioning of the UPC before the UPC Agreement becomes effective. Its subject matter is limited to the institutional, organizational, and financial aspects of the UPC Agreement.

Stratulat Albulescu - Attorneys at law