The EU’s proposed updates to the legal framework for patent licensing risks undermining the Unified Patent Court, an association of intellectual property judges have warned in a letter seen by MLex. The letter singles out the standard-essential patent regulation and a rule on supplementary protection certificates for medicinal products.
An association of intellectual property judges are urging top European Commission officials to “review” pending legislation on patents due to legal concerns, according to a letter seen by MLex.The letter refers to controversial bills on standard-essential patents (SEPs) and supplementary protections certificates (SPCs) for medical products proposed by the commission in April 2023.
At the heart of the judges’ letter — addressed to EU Commissioners Stéphane Séjourné, responsible for industry and internal market, and Ekaterina Zaharieva, overseeing start-ups and innovation — are concerns the proposals could damage the role of the Unified Patent Court.
“By dividing competences between the General Court of the EU and the UPC, the proposals entail risks of divergent caselaw and protracted parallel proceedings; risks of a fragmented European patent system that the UPC was created to overcome,” said the letter, signed by Robin Jacob, president of the Intellectual Property Judges’ Association and a former judge in the Court of Appeal of England and Wales.
The UPC was established in June 2023 after decades of work to set up EU-wide protection for patents and has seen 635 cases filed since its inception (see here).
The two bills suggest offering the EU Intellectual Property Office (EUIPO) – a venue currently used for trademark applications and proceedings – new jurisdiction over SEPs and SPCs.
The letter specifically opposes the SEP regulation’s introduction of a mandatory nine-month conciliation period for disputing patentees and standard implementers at the EUIPO, which it said would detract from the UPC’s full oversight over unitary patents and the court’s own dispute settlement center.
SEP litigation in the UPC or other national EU courts would have to be suspended during that conciliation period, which may prompt companies to initiate SEP proceedings outside the EU, said the three-page letter representing some Unified Patent Court judges and EU judges.
“Parties seeking speedy resolution of their disputes involving worldwide patent portfolios could take their cases to overseas jurisdictions, seriously undermining the UPC’s international competitiveness,” the letter continues, echoing comments from UPC Court of Appeal president Klaus Grabinski (see here).
“Barring parties from accessing the UPC and any competent court of an EU Member State during such a long period would also pose serious risks to the fundamental right of access to justice,” said the association’s letter.
The EU Parliament reached an agreement on the SEP regulation a year ago and the bill has since been left for EU ministers to adopt a position before negotiations can begin — with each to defend their version of the commission’s draft in three-way negotiations between the EU legislative bodies.
Proponents of the SEP regulation argue that it provides much-needed transparency to the licensing process and prevents patent holders from abusing their dominant market position.
The SPC regulation is currently in the same three-way negotiation, but closer to the end of the EU's legislative process. The bill revises the existing framework that extends intellectual property rights for a patent on an authorized pharmaceutical product by up to five years, by introducing EU-wide SPCs. Like the SEP regulation, the SPC regulation aims to improve transparency.
The letter was also sent to EU Parliament committees for legal and internal market affairs, EU member state representations and European Patent Office leadership.
—Additional reporting by Khushita Vasant.
Please e-mail editors@mlex.com to contact the editorial staff regarding this story, or to submit the names of lawyers and advisers.