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1 June 2023 marks a significant step forward for patent protection and enforcement in Europe with the commencement of a new unified European patent system comprising:

  1. A Unitary Patent, providing uniform protection and equal effect across all participating Member States on a one-stop-shop basis.
  1. A Unified Patent Court (UPC), offering a single, specialised patent court common to all participating Member States.

We previously reported (in 2021 and 2022) on the steps taken towards the establishment of the Unitary Patent and UPC, and the legislative hurdles that needed to be overcome for their operation to commence.

Overview of the Unitary Patent 

The Unitary Patent system entered into force on 1 June 2023. It does not replace the existing patent system in Europe, but builds on the European Patent Convention (EPC) to form a new centralised path to grant and protect European patents across the (now) 17 EU Member States that have ratified the UPC Agreement (the participating Member States)

The Unitary Patent gives uniform protection and equal effect (unitary effect) to patents issued by the European Patents Office (EPO) in participating Member States.

Under the existing European patent system, ‘classic’ European patents granted centrally by the EPO under the EPC are validated in selected countries of interest, as a bundle of national patent rights. 

The pre-grant phase for a European patent is unchanged by the new Unitary Patent system, which is still administered by the EPO. However the post grant procedure has evolved. Now, within one month of the grant publication, an applicant can choose the form of European patent protections as being a ‘Unitary Patent’ with ‘unitary effect’. The European patent is then elevated to a Unitary Patent with uniform protection and equal effect in participating Member States. The new system is more efficient, insofar as it eliminates the need to apply for and renew a series of national validations in different EU countries. Instead, a single procedure, subject to a single renewal fee in a single currency, is all that is required for a Unitary Patent, which can then be enforced in a single, centralised, litigation system before the UPC.

Overview of the Unified Patent Court 

The UPC is a new specialised court common to participating Member States. It comprises a Court of First Instance – divided into local, regional, and central divisions – and a Court of Appeal. The CJEU will hear requests from the UPC for preliminary rulings on questions of EU law. 

The UPC has exclusive jurisdiction to hear disputes relating to Unitary Patents. The UPC also has exclusive jurisdiction to hear disputes relating to infringement and validity of classic European patents that have been validated in participating Member States, and any special protection certificate (SPC) issued for a product covered by such a patent, unless those patents have been “opted-out” of the UPC’s jurisdiction.

Before 1 June 2023 classic European patents were enforced on a country-by-country basis. Proceedings were issued in parallel across multiple jurisdictions. This has sometimes led to irreconcilable judgments on validity and infringement. The UPC, as a single Court, is expected reduce the likelihood of conflicting judgments from different national courts as enforcement is effective across all participating Member States.

Proprietors of classic European patents in participating Member States may apply to opt-out of the UPC’s jurisdiction at any time during a “transitional period”. The transitional period, which commenced on 1 June 2023, will last for seven years but may be prolonged with a further seven years subject to review of the Administrative Committee. The opt-out will last for the lifetime of the European patent and any associated SPC unless it is withdrawn. If an opt-out is withdrawn, it is not possible to opt-out again. By opting-out, proprietors of classic European patents eliminate the risk of centralised revocation and the uncertainty surrounding the untested UPC. It is worth noting that Unitary Patents and classic European patents already forming part of an action before the UPC cannot be opted-out.

During the Transitional Period the UPC will share jurisdiction with the National Courts for classic European patents. A competitor or third party has discretion whether to initiate a legal action before the UPC or National Court. After the Transitional Period ends, the UPC will have exclusive jurisdiction for classic European patents.

The UPC has no jurisdiction over patents which have opted out during the transitional period, European countries that have not yet ratified the UPC Agreement, and countries that are not participating in the Unitary Patent system, i.e. non-European members of the EPC. Decisions of the UPC will have effect in participating Member States where the patent has effect.

The UPC has the power to centrally revoke a patent and grant a range of remedies, including preliminary injunctions and final injunctions, that will apply across participating Member States. 

Participating Member States

To participate in the new unified patent system, Member States must ratify the UPC Agreement. It is not sufficient to be a signatory state. Only Member States that have deposited their instrument of ratification can benefit from the new system.

To date, a total of 17 EU Member States have ratified the UPC Agreement, This includes: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

Seven Signatory States have not yet ratified the UPC Agreement. This includes Cyprus, Czech Republic, Greece, Hungary, Romania, Slovakia and Ireland, which are expected to deposit their instrument of ratification in the coming years. Despite its harmonising objective, the territorial scope of a Unitary Patent is not automatically extended for countries that ratify the UPC Agreement at a later date. Consequently, there will be different generations of Unitary Patents.

Ireland: the Current Position

Ireland has been a signatory to the UPC Agreement since 2013, however it has not been ratified. A referendum is required because the setting up of the court would require Ireland to agree to the transfer of the forum for relevant patent litigation from the Irish Courts to the UPC. On 23 July 2014 the Irish Government approved the heads of the Amendment of the Constitution (Unified Patent Court) Bill. However, there has been no meaningful progress to date. Last month, Simon Coveney, the Minister for Enterprise, Trade and Employment, suggested the referendum would take place in late Autumn or in Spring 2024 to coincide with the local and European elections. While the latter was stated to be “more likely” lobbying groups are calling for expedited action with some suggesting the Government hold the referendum in November 2023, to coincide with the recently announced referendum on gender equality.

As the only English speaking and common law participating state within the UPC system with a Commercial Court that already plays an active role in the management of life sciences disputes, usually being simultaneously litigated in numerous European jurisdictions, Ireland was in a strong  position to host the Life Sciences section of the Central Division of the UPC. Recently, however, the Italian Foreign Office published a press release announcing an agreement with France and Germany to set up the Central Division in Milan. This agreement will be considered by the other UPC signatory states during the next meeting of the Administrative Committee in June 2023. 

We will keep readers of our blog updated with the timing of the referendum to ratify the UPC Agreement when there is greater clarity from the Irish Government on timing.

For more information on this topic, please contact John Whelan, Partner, or Sean Dwyer, Solicitor, or any member of the Patent Group in A&L Goodbody’s Commercial & Technology team.

The Commission has published a draft delegated act on audits to be performed very large online platforms (“VLOPs“) and very large online search engines (“VLOSEs“) pursuant to Article 37 of Digital Services Act Regulation (“DSA“) for public feedback.

Continue Reading Commission publishes Draft Delegated Act in respect of Audits conducted under DSA

Following the first designation of Very Large Online Platforms (“VLOPS“) and Very Large Online Search Engines (“VLOSEs”) under the Digital Services Act Regulation (“DSA“) on 25 April 2023, the European Commission has now announced a call for evidence from stakeholders to inform proposed delegated acts on data access mechanisms.

Continue Reading Commission Calls for Stakeholder Views on Data Access Mechanism under DSA

Last week, the European Commission (the Commission) adopted the first designation decisions under the Digital Services Act (DSA) which designated certain services as Very Large Online Platforms (VLOPs) and / or Very Large Online Search Engines (VLOSEs) in accordance with Article 33(4) of the DSA. 

17 VLOPs and 2 VLOSEs were designated under the decisions adopted by the Commission:

  • VLOPs: Alibaba AliExpress; Amazon Store; Apple AppStore;; Facebook; Google Play; Google Maps; Google Shopping; Instagram; LinkedIn; Pinterest; Snapchat; TikTok; Twitter; Wikipedia; YouTube; Zalando.
  • VLOSEs: Bing; Google Search.

It has been reported that a second wave of VLOP/VLOSE designations by the Commission may follow. The Commission is currently investigating the user data of services such as Spotify, Telegram, Pornhub and AirBnB who have claimed that they have less than 45 million monthly active users (MAU) in the EU. These services may also be designated if their MAU numbers are revised.

When do VLOP/VLOSEs’ DSA obligations begin to apply?

The providers of the services that have been designated as VLOP/VLOSEs must comply with relevant obligations under the DSA from four months after the Commission’s notification of designation i.e. 25 August 2023. The obligations aim to empower and protect users online (including minors) by requiring the VLOP/VLOSEs to assess and mitigate their systemic risks and to provide robust content moderation tools. Some of the key obligations for VLOP/VLOSEs that will come into effect from 25 August 2023 include:

  • the obligations to perform risk assessments to assess the “significant systemic risks” that stem from the provision of their services. This would include risks in relation to the dissemination of illegal and other harmful content through their services. VLOP/VLOSEs will be required to put in place reasonable, proportionate and effective mitigation measures, tailored to the specific systemic risks identified in their risk assessment, with particular consideration for the impacts of such measures on fundamental rights;
  • the obligation to establish an independent compliance function that reports directly to the management body of the provider and can raise concerns and warn the management body of non-compliance risks;
  • the obligation to conduct independent audits which assess the provider’s compliance with certain obligations arising under DSA, as well as any commitments to the codes of conduct; 
  • the obligation to comply with detailed transparency reporting requirements including the requirement to make publicly available reports, setting out the main findings of the external audit and the results of the risk assessment;
  • The requirement to create, maintain and make available a publicly accessible repository of all ads that have been presented on their platform. The repository must include information on the period during which the advertisement was/is being presented to recipients of the service, and for one year after the ad’s final exposure. The repository must also contain additional information relating to ads, including the parameters used to specifically display the ad to one or more particular groups of recipients and the total number of service recipients reached (with aggregate numbers broken down by Member State, if applicable).

If you would like further information on this topic, please contact A&L Goodbody’s Commercial & Technology team.

In a recent significant judgment1 from the Irish Circuit Court, the judge concluded that “justice is best served” by granting a stay of a data subject’s damages claim pending determination of certain preliminary references currently before the CJEU. The court expressed a view that damages in the case, if awarded, were likely to be small and a stay would not impact the procedural efficiency of the proceedings, but a delay in granting a stay could substantially and unnecessarily increase legal costs for the defendant.

Continue Reading “Justice Best Served” – Data Subject Claims Stayed

Yesterday, 01 February 2023, the Commission published guidance on how online platforms and search engines within the scope of the Digital Services Act (DSA) should comply with their obligation to report user numbers in the EU.

As highlighted in our recent update, the DSA requires providers of online platforms and of online search engines to publish, by 17 February 2023, information on the average monthly active recipients of their services in the EU, on their publicly available online interfaces. The number must be calculated as an average over the period of the past six months.

Online platforms/search engines, whose numbers reach the threshold of 45 million average monthly active recipients in the EU, will be designated by the Commission as very large online service providers (VLOPs) or very large online search engines (VLOSEs). However, the Commission is not bound by information provided by online service providers, – it may use other available data or request additional information.

While the guidance is not ground breaking, it provides a helpful interpretation of certain provision of the DSA.

In relation to the calculation of active recipients of the service, the guidance stipulates the following:

Continue Reading DSA: Commission issues guidance on the requirement to publish user numbers in the EU

Coimisiún na Meán (the Media Commission), is currently in the process of being established in accordance with the Online Safety and Media Regulation Act (OSMR). Further information on its establishment and the appointment of the first four commissioners to Coimisiún na Meán can be read here.

In addition to its role as the supervisory authority under the OSMR and as Ireland’s Digital Services Coordinator under the Digital Services Act (DSA), the Irish Government also plans to designate Coimisiún na Meán as the competent authority under the Terrorism Content Online Regulation (the TCO).

What is the TCO?

The TCO is EU legislation aimed at preventing the misuse of hosting services for the public dissemination of terrorist content online. It requires that hosting services, and relevant competent authorities, move quickly to identify and remove terrorist content online, as well as facilitating cooperation between other member state authorities and Europol.

Under the TCO, “terrorist content” can be broadly defined as content which:

  • incites the commission of a terrorist offence through the advocation or glorification thereof;
  • involves the solicitation of a person or group of persons to commit or contribute to the commission of a terrorist offence;
  • involves the solicitation of a person or group of persons to participate in the activities of a terrorist group;
  • provides instruction on the making or use of explosives, firearms or other weapons or noxious or hazardous substances for the purpose or committing or contributing to the commission of a terrorist offence; and
  • constitutes a threat to commit a terrorist offence.

Role of Coimisiún na Meán

The TCO requires that member states adopt necessary national legislation to ensure that penalties for infringement under it are implemented. 

Due to the overlap of investigation and enforcement powers contained in the OSMR and envisaged in the TCO regulation, the Irish government has agreed that “it makes sense” that Coimisiún na Meán takes on the responsibilities under the TCO relating to the oversight and sanctioning of hosting service providers. It has been announced that the Irish government intends to introduce amending legislation to the OSMR to allow for Coimisiún na Meán’s powers to be used for the enforcement of the TCO. However, there is no indication as of yet on when this amending legislation will be put forward before the Oireachtas.

For more information on this topic, please contact Andrea Lawler, Partner, Commercial & Technology, Caitríona Lavelle, Solicitor, Commercial & Technology or any member of A&L Goodbody’s Commercial & Technology team.

Today, the Minister for Tourism, Culture, Arts, Gaeltacht, Sport and Media, Catherine Martin announced the appointment of four Commissioners to Coimisiún na Meán/the  Media Commission. The Media Commission, which  is currently in the process of being established in accordance with the Online Safety and Media Regulation Act (OSMR), will act as the supervisory authority under the OSMR and as Ireland’s Digital Services Coordinator under the Digital Services Act (DSA) and will have the responsibility to implement and enforce the Digital Services Act, an EU Regulation, in Ireland.

The following individuals are being appointed as commissioners:

  • Jeremy Godfrey as Executive Chairperson – with responsibility for coordinating the functions of the Media Commision;
  • Niamh Hodnett as Online Safety Commissioner – with responsibility for overseeing the regulatory framework for online safety under OSMR;
  • Rónán Ó Domhnaill as Media Development Commissioner – with overall responsibility for the funding and development of the wider media sector and for the implementation of a number of the key recommendations of the Report of the Future of Media Commission; and
  • Celene Craig as Broadcasting Commissioner – with responsibility for overseeing current functions of the Broadcasting Authority of Ireland. 

Recruitment for the Commissioner for Digital Services, that will lead the digital services function within the Media Commission, has also commenced but no appointment has been announced as of yet.

For more information on this topic, please contact Andrea Lawler, Partner, Commercial & Technology, Caitríona Lavelle, Solicitor, Commercial & Technology or any member of A&L Goodbody’s Commercial & Technology team.

The first draft delegated regulation supplementing the Digital Services Act (DSA) was published by the European Commission yesterday.

The regulation outlines the criteria to be used when calculating the supervisory fees which will be charged on very large online platforms (VLOPs) and very large online search engines (VLOSEs) under Article 43 of the DSA.

In particular, it includes:

Continue Reading DSA: Delegated Regulation setting the methodology and procedure for determining the Supervisory Fee

On 19 December 2022, the Commissioner for Internal Market of the EU published an update on the date when very large online platforms (VLOPs) and very large online search engines (VLOSEs) will be required to comply with the provisions of the Digital Services Act (DSA).

The Commissioner noted that VLOPs / VLOSEs will be required to comply with the new rules by no later than 1 September 2023. To meet the deadline the Commission would need to designate VLOPs and VLOSEs by 28 April 2023. Based on this update the current timeline of the DSA application is as on the graphic below.

Continue Reading Digital Services Act: Timeline