Joanna Krakowiak

Council gives green light to proceed with development of uniform patent

Even though the European Court of Justice recently issued a negative opinion on the notion of a treaty that would establish a European and Community Patent Court, the Council of the European Union has approved intensified work by the European Commission on a single patent that would be applicable across all EU member states.

Work toward a uniform patent has been underway in some form for decades. In 2010 the idea arose to apply the mechanism of “enhanced cooperation,” introduced by the Treaty of Lisbon, between member states supporting creation of uniform law. Applying this mechanism would mean abandoning the requirement of unanimity of all EU countries. Poland was one of the group initiating implementation of the enhanced cooperation mechanism for creation of a uniform patent, and it continues to support this approach. Currently 25 out of 27 member states support enhanced cooperation in creation of a uniform patent. The only countries that are opposed are Italy and Spain.

What would the uniform patent look like?

The uniform patent, referred to in earlier proposals as the Community patent or EU patent, would be a single right, granted centrally, and extending throughout the EU. However, if Italy and Spain do not reverse their negative position, the uniform patent would cover the territory of the EU except for those two countries. The uniform patent would enable inventors to gain protection without undergoing additional administrative proceedings before the patent offices of individual EU countries. The scope of patent protection would be the same in each of the member states.

Compared to now

Today innovators who are entitled to file a patent application may seek a “European patent,” granted by the European Patent Office in Munich. But going through the procedure before the EPO does not automatically mean that the invention will be protected throughout the EU or in other countries that have joined the European Patent Organisation (such as Norway, Switzerland and Turkey). After obtaining a positive decision from the EPO, it is necessary to undergo a validation procedure in the patent offices of specific EU member states where the holder seeks to protect the invention. Thus the European patent is not a uniform right, but a bundle of local rights granted in specific countries. This system has been in operation since 1977 (for Poland since 2004) and is often used for example by pharmaceutical companies. It is more convenient than obtaining national patents because review of the grounds for issuing the patent is conducted centrally, at the EPO.

What about languages?

A bone of contention between member states is the problem of the languages in which the proposed uniform patent would be granted, as well as the question of whether the patent description would undergo official translation after the patent is granted. European patents are issued in one of the official languages of the EPO—English, French or German. In some countries, such as Poland, it is required to translate the description into the official language of the country, but in countries that have joined the London Agreement this requirement has been abandoned. Given that there are 23 official languages in the EU, it is already basically understood that a uniform patent would be issued in the official EPO languages, or perhaps only in English. It is unclear so far whether it would also be necessary to translate the description into national languages after the uniform patent is issued.

The issue of the language in which the patent claims and the description of the invention would be stated is important for legal certainty. In patent descriptions, particularly for pharmaceutical patents protecting e.g. pharmaceutical compositions or production methods, specialised technical and legal language is used that can be difficult to understand and to translate. If patent documents were not translated until a judicial dispute arose, it could make the proper determination of the scope of protection even more difficult than it is now. The parties could then offer their own conflicting translations of a patent that was originally granted in another language.

Within the next few months the European Commission is expected to present proposals for laws concerning a uniform patent and addressing the language issue. It may then be seen how the specific legal proposals look and how they are received in the various EU member states.

Joanna Krakowiak, Life Science and Regulatory Law practice, Wardyński & Partners