1 The European patent system is changing! What does it mean for you? Jeremy Philpott European Patent Office
2 The next 20 minutes Patents in Europe: The current system The unitary patent The Unified Patent Court
3 Venice in the 1420s
4 Brian McMorrow
5 Patents a policy tool Knowledge transfer Technology diffusion
6 Getting patents the national route United Kingdom Spain Germany Sweden Search Search Search Search Publication Publication Publication Publication Examination Examination Examination Examination Grant Grant Grant Grant
7 Getting patents international route: WIPO WIPO Patent Cooperation Treaty (1970, in force 1978) United Kingdom Spain Germany Sweden Search Search One ISA Search Search Search Publication 150 states! Publication One WIPO Publication Publication 30 months Publication Examination Examination Examination Examination Grant Grant Grant Grant
8 Getting patents European Patent Convention EN / FR / DE EPO Search EPO Publication European Patent Office EPC 1973 (rev. 2000) A bundle of national rights to be licensed or litigated separately in each member state. Applicant pays for as many states as needed. Examination Validated nationally Grant Publication Opposition (9 months) File translations
9 EPO application process streamlined FEES FEES Application SEARCH PUBLICATION EXAMINATION GRANT EN / FR / DE
12 Patent Translate: Google meets patent corpora
13 The Unitary Patent EN / FR / DE EPO Search EPO Publication At grant the applicant chooses if their patent will be unitary or separate national rights or both. Unitary patent annual fees equal to Top 4 Valid in states Examination Opposition (9 months) Validated nationally Grant Publication Opposition (9 months) File translations
14 Unitary patent & EPO member states Unitary patent states Austria Belgium Bulgaria Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Ireland Italy Latvia Lithuania Luxembourg Malta Netherlands Poland Portugal Romania Slovakia Slovenia Sweden United Kingdom Other EPO member states Spain Iceland Switzerland Norway Turkey Monaco San Marino Liechtenstein Croatia Serbia Albania Former Yugoslav Republic of Macedonia
15 Unified Patent Court Infringement actions Local or Regional Divisions European patents and Unitary patents Court of first instance Central Division Paris, London Munich Revocation actions Court of Appeal Luxembourg Appeal on Matters of Fact &/or Points of Law European Court of Justice Preliminary rulings on Union Law
16 Thank you for your attention! Jeremy Philpott Communications European Patent Office
17 The European patent system is changing! What does it mean for you? Kerry Rees 26 July 2016
18 Changes as a result of the UPC Filing and prosecution will not change at the EPO. No Decision needed until grant. So why choose the unitary patent?
19 Key Information Opting out of the UPC system Existing European Patents and pending applications, once granted, will automatically become a Unitary Patent (UP), unless opted out. Unitary patents (UPs) will be subject to the rules of the Unitary Patent Court (UPC) in all validated states. Actions including infringement or revocation proceedings will be effective in all validated states. There will be no fees payable for opting out of the UPC system. A request to opt-out can be made at any time during the Transition Period providing no UPC proceedings have started. The Transition Period will last force 7 years from the date the UPC comes into force. There will be a sun-rise period during which opt-outs may be requested before the UPC comes into force.
20 Key Decisions Should I opt-out my existing European patents? The UPC system is new and untested. It may be sensible to opt-out some or all of your current European patents during the Sunrise period. Should I wait to file an opt-out once I have seen how effectively the UPC functions? Delaying opting out may be risky since a third party could initiate proceedings against your patent, removing your right to opt out. Should I request a UP? A UP may not be appropriate for your most important cases since it may be knocked-out by a single action. A UP may also not be appropriate for cases which may ultimately not be commercially viable since UPs incur a single (higher) renewal fee. How can I avoid the UPC after the Transition period? National patent applications may be filed as an alternative to the UPC system. For non-pct EPC states, a national patent must be filed during the priority period.
21 Costs Unitary Patent In time, will become necessary to translate the claims into French, German and English only. Single prosecution costs pre- and post-grant. European Patent Validation fees due in each country. Translations required for non-london Agreement countries. Separate post-grant prosecution costs in each country if challenged more than 9 months after grant. Single prosecution costs pre- and post-grant (within 9 months). National patents Appropriate translations required for each national case. Separate prosecution costs pre- and post-grant for each country.
22 Renewal Costs Renewal fees increase with the age of the patent. Unitary Patent Single renewal fee. Set at the combined cost of French, German, UK and Netherlands renewal fees. European Patent Single renewal fee payable prior to grant (from 2 nd anniversary of filing). Renewal fees due in each validated Member State after grant. National patents Renewal fees payable for each national patent.
23 Unified Patent Court (UPC) Jurisdiction over UPs in the 25 participating EU Member States. Jurisdiction over granted EPs in EU Member States participating in enhanced cooperation of the UP (unless the proprietor has opted out during the transition period). No jurisdiction over national patents in non-eu EPO Member States, e.g. Albania, Iceland etc. No jurisdiction over national patents in non-participating EU EPO Member States, namely Spain, Croatia and Poland.
24 Structure Court of First Instance: Central, Local and Regional Divisions having multinational panels of judges. Court of Appeal: Three key courts in London, Munich and Paris, each having a particular subject area. London Court of Appeal set to hear Chemistry and Life Sciences cases.
25 Options in Europe Once the UP comes into force there will be four forms of patent protection in Europe: National Patents granted and enforced nationally. European Patents granted by the EPO and enforced nationally. European patents granted by the EPO and justiciable by the UPC. Unitary patents granted by the EPO and having unitary effect. The UP does not cover all EPC Member States. Proprietors will need to validate an EP or file a national patent application in these states. A UP may be obtained from a PCT application. National patents in some EPC Member States may not be obtained from a PCT application (e.g. France, Belgium, Italy, Ireland etc.). To obtain non UP protection in these states, a national or EP application must be filed at the start of the patenting process, and may incur substantial translation costs.
26 UPC Pros & Cons Pros Potential savings in translation, validation and post-grant prosecution costs. Cons Risk of revocation in all participating EU Member States. Injunctions may be obtainable in all participating EU Member States. Uncertainty in how the new court will operate in practice.
27 Effect of Brexit on Patents No impact on granted UK patents regardless of whether obtained directly through the UKIPO or via the EP route. No impact on the UK patent attorneys ability to represent clients at the EPO. No impact on UK business ability to file European patents. No impact on European patents or patent applications since the EPO is not an EU institution. European patent applications will continue to designate the UK and can then be validated in the UK. Many Member States of the EPO are not members of the EU, e.g. Switzerland, Norway and Turkey.
28 Effect of Brexit on the UPC The UPC must be ratified by thirteen Member States and three of these must be the UK, France and Germany. Predicted implementation date (2017) likely to be delayed. The UP is only set to have effect in participating Member States of the EU. Many EU Member States are currently not set to be participating, including Spain, Poland and Croatia. If the UK leaves the EU it may be unable to participate in UPs and the UPC. Nothing is yet certain There are some proposals to enable to UK to participate post Brexit.
29 Situation if UK does not participate in the UPC The UPC will not have jurisdiction over European patents validated in the UK. A UP will not protect IP rights in the UK. UK businesses may benefit from not being subjected to possible pan-eu injunctions or revocation.
30 Thanks for listening Kerry Rees: VISIT WP Thompson Stand C 21 in the Main Exhibition Hall
31 The European patent system is changing! What does it mean for you? Dr Joanna Cox Cranfield University Patent protection and commercialisation practice from a university tech transfer perspective
32 Joanna Cox, Head of Business Partnerships, Cranfield University Overview of talk What are universities and research organisations trying to achieve here? Why do we protect IP? What are there any alternatives? Where are my markets? What territories should protection cover? What can I afford to protect? How does this fit in with the new European patent system?
33 What are universities and research organisations trying to achieve here? To achieve our Charitable aims Cranfield s charitable aims/purposes are to: advance, disseminate and apply learning, knowledge and understanding with particular emphasis on the disciplines of the Sciences, Technology, Engineering and Management; and promote and encourage the transformation and application of that wisdom, knowledge and learning for the benefit of industry, the public services, and individuals and for the public benefit. To maximise Impact from research Key output for most funding bodies Obtain societal benefit as a return on public / charitable funding
34 What are universities and research organisations trying to achieve here? Income To provide an additional funding stream for researchers, and allow them to obtain a fair and reasonable return for their invention. To ensure interests aligned Prestige? To increase the prestige of institutions through the number of granted patents
35 Why do we protect IP? What are the alternatives? To support innovation and to ensure that science can be used to transform people s lives How does protecting IP help achieve this goal? Providing exclusivity allows companies to invest in downstream development costs Reduces risk for companies looking to sell products Ownership increases confidence of companies to change
36 Why do we protect IP? What are the alternatives? Protecting IP is not always the right solution to increase innovation If solution can be easily adopted, and aim is to maximise numbers of users then protection can be counterproductive Open source alternatives Freely published IP rights retained but made open access Add-ons / support offered on paid basis
37 Where are my markets? What territories should I cover? Carry out market survey where might product be sold? Where are the potential licensees? How much protection do potential licensees require? Are there markets where protection is not required / viable?
38 Where are my markets? What territories should I cover? What other effects does this have on potential for licensing? The amount of coverage is required to provide exclusivity will be highly dependent on product type Some licensees may be only interested in own territories Some licensees will need large territory coverage in order to make investments worthwhile Will a reduction in territories result in reduced licensing fees?
39 What can I afford to protect? Initial costs to be covered by institution what can they afford and for how long. Normally will only cover initial filing and PCT stage Decisions on whether to protect, and how much budget can be made available will depend on: Commercial potential Impact potential Ability to attract funding for development
40 What can I afford to protect? Timing matters Most institutions will have cut-off points for abandoning unlicensed patents TTOs should be able to provide details on institutions policies Important to be aware of timescales upfront so activities can be arranged to meet any deadlines E.g. Initial application, file PCT at 12months, national phase at 30 months. Ongoing costs for licensee Are they likely to be able to make a financial case to maintain this?
41 How does this fit in with the new European patent system? Should I select UP or EP? Costs and territories Timing matters Value of patent Differences on patent infringements rules
42 Some recommendations Considering exploitation routes alongside patentability issues will ensure that the best decisions can be made on which route to take. Upfront consider: Do I need protection to exploit? How long will development take? Is this the right time to patent? Where are the markets? Who will licence the IP? What are the licensees needs? Continually review as more info becomes available and plans progress
43 Conclusions Unitary patent provides an additional tool Deciding when to use that tool should be part of an overall exploitation strategy
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