For decades, European Union member states have attempted to create a European patent with unitary effect (‘unitary patent’) and a unified European patent court. A breakthrough agreement was reached in 2012, and the European unitary patent system is expected to come into effect across most (but not all) EU countries—but first, an agreement establishing a Unified Patent Court must be ratified by EU member states.

The UK Intellectual Property Office (IPO) has now launched a public consultation on its proposals for how the new Unified Patent Court (UPC) Agreement and accompanying EU Regulations should be implemented. The Government’s Economic Impact Assessments for each of its proposals are available online, including details of the evidence and assumptions on which the Impact Assessments are based.

The Intellectual Property Office’s Technical Review and Call for Evidence asks for

• your views on the drafting, structure, and effect of the draft UK legislation
• evidence relevant to how the proposals would work in practice
• evidence that could help inform the Government’s assumptions about likely economic impacts

We’ve highlighted below a few of the key points set out in the proposals.

Groundless threats

If anyone threatens to bring a patent infringement action in the UK despite knowing that no infringement is taking place or that their patent is not valid, then the threat is unjustified. In some cases, a person adversely affected by the ‘groundless threat’ may be able to claim relief via the UK courts in respect of damages they have suffered as a result of the groundless threat.

Since the Unified Patent Court’s jurisdiction won’t cover groundless threats, the UK IPO is proposing that UK provisions on groundless threats be extended to cover unitary patents and threats to bring infringement proceedings before the UPC.

However, the UK IPO proposes that the groundless threat would need to have been made in the UK before action can be taken against the patent owner. It’s unclear whether this would mean that a patent owner can avoid liability by making a threat outside the UK, even if the threat were made against someone normally based in the UK or in respect of activities alleged to have occurred in the UK.

Contributory infringement

Under UK patent law, a patent owner can prevent a third party from assisting someone to infringe a patent by knowingly supplying “means, relating to an essential element of the invention, for putting the invention into effect…in the United Kingdom”. In this case, the supplier’s actions within the UK are preventable as ‘contributory infringement’, and only if the intended infringement would also occur in the UK.

The UK IPO proposes to extend this provision so that someone in the UK may also be stopped from supplying the means to infringe a unitary patent to someone in another country covered by that patent, so that the intended infringement need not be limited to the UK.

Whose jurisdiction?

The Comptroller-General of the UK Intellectual Property Office can currently issue official decisions in patent-related disputes, such as relating to validity or infringement. The Comptoller’s decisions are legally binding in the UK, similar to the decision of a judge, but proceedings before the Comptroller are generally significantly less costly than court proceedings.

However, the Unified Patent Court will have exclusive jurisdiction over unitary patents and (eventually) all European patents in force in the UK. So, under the current proposals, these decisions will continue to be provided for UK patents only, but will not be offered for unitary patents and will no longer be available for other European patents in force in the UK.

The Comptroller will continue to offer non-binding opinions where a unitary patent or UK-designating European patent is concerned—but it remains to be seen whether UPC judges will consider those opinions to be persuasive.

Have your say

To find out more, and to have your say, visit the Government’s UPC consultation portal. The consultation is open until 2 September 2014.

Contact an advisor today

If you are concerned about any of these issues and would like our advice, or for assistance with any other intellectual property issues, click here to contact us and one of our advisors will get back to you.