Unitary patents in Europe: which law of infringement applies?

Some horses are just not worth flogging ...

The expression "flogging a dead horse" refers to the irritating habit of going back to the same subject again and again, even though every aspect of it has been thoroughly explored and there is nothing left to discuss.  Some readers might feel that any further discussion of the European Union's new patent regime smacks of flogging a dead horse: the  relevant laws have now been passed and consensus among those who really matter in Europe -- that is to say, every significant soul who has nothing to do with the functioning of the patent system or the exploitation of patents -- has been achieved.  In Papal terms, one might say that a plume of white smoke has billowed forth from the Commission and the European Parliament though, as Merpel observes, it takes a lot less time to choose a Pope than to pick a new patent system and, in the normal course of things, opportunities for picking a new one come more frequently to the Vatican conclave than they do to Europe's legislators.

Readers might by now be aware that the mere fact that agreement has been reached on the new European patent package does not mean that debate and discussion has ceased. This is not a case of flogging a dead horse. Far from it, the horse resolutely refuses to die, and indeed appears to be quite resistant to even the most vigorous of floggings.  And that is what leads on to this post.

With agreement now achieved, the keen minds of patent litigators from all over Europe are now looking increasingly closely at the new system and are doing what lawyers do best: rubbing the various new legal provisions up against one another, to see what they are really made of.  Among them is Nick Cunningham (an IP partner in the UK law firm Wragge & Co LLP), who writes as follows:

"There is concern about the potential effect of Article 5(3) of the Unitary Patent Regulation (1257/2012), which determines the law of infringement that is to apply in respect of any particular unitary patent. You may remember that it emerged late from the political wrangling over Articles 6 to 8 and possible references to the Court of Justice of the European Union.

Article 5(3) says that the scope of the rights 

"and the applicable limitations shall be those defined by the law applied to European patents with unitary effect" 

in the Member State whose law of property applies per Article 7 -- which will be the participating Member State where the application for the patent originated, alternatively Germany. In other words the rights exercisable under a unitary patent would vary according to the state of origin of that patent.

This may seem crazy -- aside from the complexity, the concern is that this will import the variation to be found between member states, particularly with regard to exceptions for experimental use and clinical trials. The German default matters because Germany has wider exceptions than many other Member States, and lots of applications originate outside the EU.

However I think the concern may be misplaced. The relevant law is that which is applied in the state in question "to European patents with unitary effect". This is circular in a helpful way. At present there is no such law in the UK, but when the unitary scheme comes into effect the law to be applied in the UK in a local division of the Unified Patent Court (or in the central division) to a European patent with unitary effect (over which the UPC has exclusive competence) will be determined by the Agreement on the UnifiedPatent Court.

The rights and limitations to be applied by the Unified Patent Court are set out in detail at Articles 25 to 28 inclusive of the Agreement, and so should be the same in all the participating Member States.

However the unitary patent rights and limitations may differ from those of national patents, and of European patents which have been opted out of the UPC's competence. Although the Article 27 limitations reflect the current UK position, it appears likely that the UK limitations will be broadened following the recent UKIPO consultation, so we may yet see significant differences here (as elsewhere) between unitary patents and the rest".

Do you agree with Nick's analysis? It seems pretty plausible to this Kat, but Merpel bets there will be plenty of different perspectives from our readers.