What are the criteria for patentability in your area?

The unified patent court will have jurisdiction to hear claims relating to both European patents and upcoming European patent with unitary effect. The European Patent Office will grant the unitary patent in accordance with European Patent Convention. The pre-grant procedure and requirements to obtain unitary patents will be same as European Patents but the patent owners will be able to request unitary effect within one month from the date the publication of the granted European patents in European Patent Bulletin.

The Patentability criteria for a unitary patent are set out in EPC and are the same as European patents. To be patentable an invention must be new involve an inventive step and be susceptible of industrial application and must not be excluded from patentability.

What are the limits on Patentability?

Under the EPC, the following are excluded from patentability:

  1. discoveries, scientific theories and mathematical method as such,
  2. aesthetic creation as such
  3. schemes, rules, and methods for performing mental acts, playing games, and doing business
  4. computer programs as such
  5. presentation of information as such
  6. the invention of which the commercial exploitation would be contrary to public policy or morality
  7. plants and animals varieties and any essentially biological processes for their production
  8. method for treating humans or animals by surgery or therapy and diagnostic method.

To what extent can inventions covering softwares can be patented?

The computer program as such are expressly excluded from patentability but claims involving computer program are not excluded if claimed subject has a technical character.

To what extent can the inventions cover business methods to be patented?

Business methods as such are expressly excluded from patentability. However, like computer programs, business methods may be patentable if the claimed subject matter has a technical character.

To what extent can inventions relating to stem cells be patented?

The use of human embryos for industrial or commercial purposes is excluded from patentability on the basis that their commercial exploitation would be contrary to public policy or morality.

Claims directed to a product which could, on the application’s filing date, be exclusively obtained by a method which necessarily involved the destruction of human embryos from which the product is derived are excluded from patentability, even if said method is not a part of the claim. It is, therefore, necessary to consider the entire teaching of the application to establish whether products such as stem cell cultures are obtained exclusively by the use, involving the destruction, of a human embryo.

Are there restrictions on any kind of inventions?

Inventions of which the commercial exploitation would be contrary to public policy or morality are excluded from patentability. In addition to the use of human embryos for industrial or commercial purpose, this includes the processes;

  1. cloning humans
  2. modifying the germline genetics identify of animals where it is likely to cause them suffering without any substantial medical benefit to humans or animals and animals resulting from such processes.


What types of patent opposition procedure are available in your jurisdiction?

The centralized EPO opposition procedure whereby a European patent can be opposed at the EPO within nine months of its grant will apply to unitary patents as it does to European patents. To the extent that an application for a European patent results in both a unitary patent and a bundle of European patents (in respect of countries to which the application for unitary effect does not extend), the opposition procedure, if successful for the opposing party, will result in both the unitary patent and the corresponding European patents being revoked.

Where there is an opposition ongoing at the EPO and parallel proceedings in the Unified Patent Court relating to the same patent, a party must inform the court of the pending opposition proceedings. The Unified Patent Court may, of its own motion or at the request of a party, request that the opposition proceedings be accelerated in accordance with the EPO proceedings. Further, the Unified Patent Court may stay its proceedings when a rapid decision is expected from the EPO.

Apart from the opposition are there any other ways to challenge a patent outside the court?

The Unified Patent Court provides another court system in which to challenge patents but introduces no additional method for challenging a patent in Europe outside the court system.

How can patent office decision be appealed in your jurisdiction?

The introduction of Unitary patent and Unified Patent Court do not affect the procedures for appealing patent office decision in Europe. However, the Unified Patent Court will have jurisdiction to hear action concerning decisions of the EPO in carrying out administrative tasks relating to unitary patents, such as administration of requests for unitary patents.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunction applications can be brought before or after merits proceedings in the Unified Patent Court have commenced. Preliminary injunction applications can be made without notice, although it appears that such ex parte applications will be granted only in exceptional circumstances. In addition, to try to prevent this, protective letters can be filed by defendants which suspect that they might be subject to an application for a preliminary injunction.

Preliminary injunctions are subject to the court’s discretion. The court will weigh up the merits of the case and the parties’ interests and take into account the potential harm for either of the parties resulting from the granting or refusal of the injunction.

How are issues around infringement and validity treated in your jurisdiction?

The Unified Patent Court Agreement contains complex provisions setting out how proceedings in which both infringement and validity are at issue may be handled. For example, where an action for infringement is brought by a patentee in a local or regional division and the alleged infringer has counterclaimed for revocation, the local or regional division may:

  • proceed with both infringement and revocation actions;
  • refer the counterclaim for revocation to the central division and either suspend or proceed with the action for infringement, which results in the possibility of the actions being bifurcated (ie, decisions of infringement and validity being heard in different venues and possibly at different times) or
  • refer both the infringement and revocation actions to the central division, with the parties’ agreement.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The Unified Patent Court will base its decisions on, among other things, the national law of member states and the European Patent Convention. It is anticipated that the Unified Patent Court will rely heavily on the substantive patent law of its member states and European Patent Office case law.

Can the successful party obtain costs from the losing party?

The general rule is that the successful party may recover its reasonable and proportionate legal costs and other expenses in relation to the proceedings in the Unified Patent Court from the unsuccessful party, up to a ceiling set out in the Rules of Procedure. The ceiling for recoverable costs depends on the value of the proceedings.


How are damages awards calculated? Are punitive damages available?

The level of damages should be appropriate to the harm actually suffered by the patent owner as a result of the infringement, such that the patent owner should, to the extent possible, be placed in the position that it would have been in had no infringement taken place. Punitive damages are not available.

The court can take into account:

  • the patent owner’s lost profits;
  • unfair profits made by the infringer; and
  • other factors, such as moral prejudice caused to the patent owner.

In some circumstances, it may be appropriate to assess the damage on the basis of a number of royalties which would have been due had the infringer requested authorization to use the patent in question.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The Unified Patent Court has a discretionary right to grant an injunction against an infringer aimed at prohibiting the continuation of the infringement. It is expected that permanent injunctions will normally be granted against a party that has been held to infringe.