Is there a future for Unitary SPCs?

With the UPC now seemingly back in business, the European Commission has just announced a public call for evidence on the possibility of establishing a single system for granting SPCs. The feedback period opened on 8 March 2022 and will run until 5 April 2022, with Commission adoption expected soon after. 

Reform of the SPC system has been in the works for a while, with the European Council encouraging the Commission back in November 2020 to present new initiatives to make IP protection and SPCs more effective and affordable. 

In the paper accompanying this new initiative, the Commission identifies four key problems with the current SPC system:

1. Divergent outcomes across EU countries;
2. Lack of unitary SPC protection for the future unitary patent;
3. Suboptimal transparency of SPC-related information; and
4. High cost and administrative burden for SPC users.

The lack of clarity with respect to the interpretation of certain aspects of the SPC Regulation has long been a source of frustration for both industry and practitioners alike. A recent example of this is the interpretation of Article 3(c) of the SPC Regulation and its application to SPCs for combination products, which has been the subject of two referrals within the last three months - one from the Finnish Market Court and one from the Irish Supreme Court, respectively.

The Commission is also considering several ways to implement potential changes to the SPC system. A non-legislative route would involve issuing guidelines based on best practice from national patent offices and CJEU case law, though the Commission accepts that such an approach would not reduce the cost of the current multi-jurisdictional SPC system.

The other alternative, a legislative route, could come in four forms - either (i) by creating a new centralised SPC system across Europe as a unitary SPC; (ii) by creating a unified procedure for granting national SPCs; (iii) by creating a combination of the two (akin to the current situation with registered trade marks and registered designs); or (iv) by making targeted changes to the current SPC Regulation on the basis of best practice.

It is worth noting that several EU countries (Spain, Croatia and Poland) have decided not to sign up to the UPC, so any unitary SPC system would still have to run alongside national rights to a certain extent. Furthermore, with the UK no longer part of the EU (or UPC) it will be interesting to see how those countries react and how the proposal for any modifications to the current system evolves to take into account the situation in those jurisdictions.