Overview of the current European patent system leading to the introduction of the Unitary patent. Ljubljana, 3 June 2014

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1 Overview of the current European patent system leading to the introduction of the Unitary patent Ljubljana, 3 June 2014 Eugen STOHR, European Patent Office Ľuboš KNOTH, Industrial Property Office, Slovakia The European Patent Convention The European Patent Convention (EPC) provides the legal framework for the granting of European patents via a centralised procedure establishes the European Patent Organisation 1973 Diplomatic Conference in Munich signature of the EPC by 16 countries 1977 Entry into force of the EPC in 7 countries - marked as follows 2 1

2 European Patent Organisation: 38 member states Albania Austria Belgium Bulgaria Croatia Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Iceland Ireland Italy Latvia Liechtenstein Lithuania Luxembourg Former Yugoslav Republic of Macedonia Malta Monaco Netherlands Norway Poland Portugal Romania San Marino Serbia Slovakia Slovenia Spain Sweden Switzerland Turkey United Kingdom European patent applications and patents can also be extended at the applicant's request to the following states ("Extension states"): Bosnia-Herzegovina Montenegro 3 Today's The European Unitary patent patent Historical system background The entry into force of the EPC in October 1977 provided Europe with an extremely successful centralised patent granting procedure However, centralisation is limited until grant of the European patent Shortcomings in the post-grant phase: > High costs/complexity for patent proprietors validation costs (translations, publication fees, attorney costs) modalities of renewal payments in the MS national registers with different requirements > Sub-optimal enforcement scheme multiple litigation with risk of diverging national decisions, high costs, legal uncertainty 4 2

3 The Unitary patent Historical background 1975: Member States sign Community Patent Convention > never ratified 1989: Member States sign Agreement relating to Community patents > ratified only by DE, DK, FR, GR, LU, NL and UK 2000: Commission presents a proposal for a Council Regulation on the Community patent > failed in : Council adopts Decision authorising Enhanced Cooperation in the patent field (all EU states with the exemption of ES and IT) > action of ES and IT against Decision (C-274/11 and C-295/11) dismissed by CJEU 2012: Council and European Parliament reach compromise on the patent package 5 Today's The European Unitary patent -system Basic architecture Unitary Patent Regulation (EU) (EU Regulation No. 1257/2012 of 17 December 2012 / OJ EPO 2/2013, ) > Introduction of the European patent with unitary effect Language Regulation (EU) (EU Regulation No. 1260/2012 of 17 December 2012 / OJ EPO 2/ ) > Translation arrangements for European patents with unitary effect Part IX EPC (Articles a) > EPC provisions dealing with Unitary patents Agreement on the Unitary Patent Court (UPC) (OJ EPO 5/ see also EPO website on the Unitary patent/upc) > Introduction of a single court system with jurisdiction for all European patents 6 3

4 The Unitary patent - Regulations The Regulations entered into force on 20 January They will be applicable for the 25 EU Member States participating in enhanced cooperation as of the date of the entry into force of the Agreement on the Unified Patent Court (UPC Agreement) The UPC Agreement was signed on 19 February 2013 by 25 EU Member States (except ES and PL but including IT). It will enter into force after the deposit of the 13 th instrument of ratification or accession, including France, Germany and the UK. 7 A. Unitary patent The Unitary patent - Concept Post-grant transformation of a classic European patent into European patent with unitary effect ("Unitary patent") in the territory of the 25 participating Member States (MS) The transformation process and the effects of the European patent are subject to the provisions of the EU Regulations and the Agreement on the Unitary Patent Court 8 4

5 Unitary patent The protection Unitary patent Basic Concept concept A "European patent with unitary effect" is a European patent: > granted by the EPO > under the rules and procedures of the EPC to which, after grant, unitary effect is given for the territory of the 25 participating Member States on request of the patent proprietor 9 The unitary The patent Unitary as a European patent - Concept patent Same grant procedure as for a classical European patent Appeal proceedings European patent application Refusal or withdrawal of application Limitation Revocation Opposition proceedings Filing and formalities examination Search report with preliminary opinion on patentability Substantive examination Grant of European patent On request of the patent proprietor European patent with unitary effect in the territories of the 25 participating MS The European patent is deemed not to have taken effect as a national patent in the 25 participating MS 10 5

6 Unitary The patent Unitary protection patent - New Concepts tasks for the EPO The following new tasks in particular will be given to the EPO: > examination of requests for unitary effect > registration of unitary effect in a new Register for unitary patent protection > publication of translations during transitional period > receipt and administration of renewal fees for Unitary patents > administration of a compensation scheme regarding translation costs Procedural details regarding the new tasks will be contained in a set of implementing provisions to be adopted by the "Select Committee" 11 The Unitary patent - Registering unitary effect Unitary effect may be requested for any European patent granted on or after the date of application of the Regulations Unitary effect may be registered only if European patent granted: > with the same set of claims > in respect of all participating MS Request to be filed by patent proprietor: > Time limit: no later than one month after the mention of the grant of the EP in the European Patent Bulletin (EPB) > Form: in writing in the language of proceedings > Translation: only to be filed during the transitional period Registration of unitary effect in "Register for unitary patent protection": > Examination of request for unitary patent protection by EPO > EPO to register unitary effect or to reject request (to be communicated to the patent proprietor) 12 6

7 The unitary patent: concept The unitary patent will co-exist with national patents and with classical European patents Various combinations of classical European patent and unitary patent a unitary patent for the 25 participating EU Member States together with a classical European patent taking effect in one or more EPC Contracting States, such as for instance ES, IT, CH, TK, NO No double protection by a unitary patent and a classical European patent on the territory of the 25 participating states 13 Registration of unitary effect Basic requirements Patent proprietor has to file the request for unitary patent protection with the EPO - in writing, - in the language of proceedings, - no later than one month after the mention of the grant is published Unitary effect can only be requested for European patents which were granted - with the same set of claims - in respect of all the participating states Translations only have to be filed during a transitional period Non-observance of time limit and/or correction of deficiencies: Legal remedies, such as re-establishment of rights? to be decided by Select Committee 14 7

8 Expected benefits for enterprises in Europe Greater variability to use patent protection Unitary patent vs European Patent vs National patent vs PCT Route Hence supporting different business strategies for patenting activities 15 Expected benefits for enterprises in Europe Lowering the costs of applicants No requirement of validation in each MS /thus payments/ as EP New translation regime for applicants with non E/FR/DE mother tongue simpler and cheaper Special category: SMEs and research institutes Concept with the benefits aiming at making Europe even more attractive for inventors from all over the world 16 8

9 Expected benefits for enterprises in Europe Single renewal fee for the Unitary patent to be paid to the EPO: EPO retains 50% remaining amount distributed in accordance with Article 146 EPC and the key defining the participating Member states' share Setting the level of renewal fees: only broad criteria set out in Regulation reductions for specific entities such as SMEs possible Renewal fees must be set low enough to be attractive to users but high enough to ensure the EPO's financial sustainability to be decided by Select Committee 17 Expected benefits for enterprises in Europe Greater patent pool over Europe boosting of internal European innovation strengthening Europe's competitiveness and bring it on a par with other regions, such as Asia and the US 18 9

10 Expected benefits for enterprises in Europe In time a greater legal certainity to businesses Unified Patent Court rulings Final ruling - strengthening patent owner s rights in 25 MS - revoking patent owner s rights in 25 MS This all thanks to its unitary protection effect and the creation of a specialised patent court ruling with Europe-wide effect on patent infringement and validity. 19 Expected benefits for enterprises in Europe Effects of the decision Infringement Revocation inter partes erga omnes Territorial scope of the revocation decision Unitary patent "Classical" European patent territory of the contracting states for which the patent takes effect 20 10

11 Translation arrangements Basic concept Builds on EPO language regime (Art 14(6) EPC) No further translations unless legal dispute Reliance on high quality machine translations for both applications and specifications to be available for free in all EU official languages for information only (no legal effect) Compensation scheme for costs incurred by SMEs and others when translating their application into an EPO official language: "reimbursements" of translation costs up to a ceiling 21 Translation arrangements Transitional measures Request for unitary effect to be filed together with full EN translation if the patent is granted in FR or DE full translation into any language of the EU if the patent is granted in EN Translations will be for information only (no legal effect) Temporary (max. 12 years): only until high quality machine translations become available 22 11

12 Select Committee work update So far 8 meetings since March 2013 Draft Rules relating to Unitary Patent Protection already reviewed by the members in March 2014 Draft Rules for the compensation scheme for reimbursing unitary patent translation costs post grant adopted + agreement on discussing financial aspects of the compensation scheme Accompanying measures at national level May 2014, 8th SC Meeting Technical presentations on simulation of different fee levels Plan for 2014: legal and /or financial and budgetary questions relating to UPP 23/8 Thank you for your attention 24 12