The future patent system of the EU

Transcription

1 The future patent system of the EU Shanghai, 5 September 2013 Niklas Mattsson, Partner, Awapatent AB Overview of the presentation The current European Patent European Patents with Unitary Effect ( EPwUE ) Unitary Patent Court ( UPC ) Structure Competence Forum rules Languages Representation Entry into force 2 Awapatent AB/Niklas Mattsson 1

2 The current European Patent The current European Patent The EPC provides a bundle of national patents National procedure for infringement and validity Top litigation countries Germany: 700 new cases/year 400 decided France: 300 new cases/year 140 decided United Kingdom: 70 new cases/year 30+ decided Netherlands: 70 new cases/year 40 decided Sweden: 50 new cases/year 9 decided About 50 % of cases are appealed Awapatent AB/Niklas Mattsson 2

3 NEW: European patents with unitary effect ( EPwUE ) Sources of law EU Regulation 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection EU Regulation 1260/2012 of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements European patents with unitary effect Awapatent AB/Niklas Mattsson 3

4 European patents with unitary effect European patents with unitary effect Unitary effect within the EU, except Spain and Italy Note that several members of the EPC are not members of the EU (e.g. Norway, Switzerland, Turkey) Infringement in and validity of one patent Awapatent AB/Niklas Mattsson 4

5 EPwUE the grant stage Claim translations + grant fee Publication of grant (Validations) Decision to grant Request for unitary effect Opposition deadline Request for unitary effect (1M) + translation Validations (3M) - optional Opposition (9M) UP renewal fees payable to the EPO Uniform patent rights conferred EPwUE unitary effect? Unitary character Uniform rights Uniform scope of protection Same claims for all states This applies to all states Transfer Revocation Lapse This may apply to some states only Licensing Awapatent AB/Niklas Mattsson 5

6 Rights conferred by an EPwUE uniform protection The rights conferred are set out in the Agreement on a Unified Patent Court These rights are referred to in the Regulation on the unitary patent Regulation on the unitary patent Agreement on a Unified Patent Court Definition of rights conferred and limitations Rights conferred by an EPwUE Right to prevent direct use of the invention Covered product Covered process Product obtained directly by a covered process Right to prevent indirect use of the invention Supply of essential element needed to put invention into effect Except staple commercial products (unless inducement) Limitations of the exclusive right Private & non-commercial uses Uses for experimental purposes Bolar provision and others Awapatent AB/Niklas Mattsson 6

7 Offer to license EPwUE Reduced renewal fees Goal: To promote and facilitate economic exploitation Proprietor may file a statement with the EPO that he is prepared to grant a license in return for appropriate consideration Proprietor may then benefit from a reduction of the renewal fees Exhaustion of rights conferred by EPwUE The principle of the exhaustion of rights also applies to European patents with unitary effect Rights conferred by a European patent with unitary effect do not extend to acts concerning the product covered by that patent which are carried out within the participating Member States after that product has been placed on the market in the Union by the patent proprietor Awapatent AB/Niklas Mattsson 7

8 Languages & translations for EPwUE General principles of the EPC apply Filing in any language Translation into one of the three official languages (EN, FR, DE) Machine translations into all EU languages (Google) Transitional regulations Translation into English If language of proceedings is English, translation into one other EU language In case of conflict Accused infringer may request translation (at the cost of patentee) Court will require translation (at the cost of patentee) NEW: Unified Patent Court ( UPC ) Sources of law Agreement on a Unified Patent Court Signed 19 February 2013 by 25 states Italy did sign, but not Poland or Spain 15th draft of the Rules of Procedure Open for consultation from 25 June to 1 October 2013 Awapatent AB/Niklas Mattsson 8

9 Unified Patent Court general One proceeding for all member states Reduces cost Same result in all countries Not possible to stall proceedings Exclusive jurisdiction in infringement and revocation proceedings, both for national validations of European Patents and European Patents with Unitary Effect Unified Patent Court structure Court of First Instance Local division possible in every member country 1 additional division/100 patent cases Maximum 4 divisions Regional divisions in cooperating countries Central division (in three sections) London Munich Paris (seat of court) Panels of three judges (multinational composition) Awapatent AB/Niklas Mattsson 9

10 Unified Patent Court structure Court of Appeal Located in Luxembourg Panel of five judges (3 legal + 2 technical) Opinion on EU law by the CJEU may be requested Unified Patent Court competence Exclusive competence for all European patents with unitary effect (EPwUE) Classical European patents (in respect of the contracting member states) Supplementary protection certificates Includes applications filed and patents and SPCs granted before entry into force of UPC agreement Awapatent AB/Niklas Mattsson 10

11 Unified Patent Court competence Transitional period Cases concerning classical European patents (not EPwUE cases) may still be brought before national courts during 7 years after entry into force of the UPC agreement Within this 7 year period, it will also be possible to opt out of the competence of the UPC for classical European patents Opt out may be withdrawn at any time Opt out not available if action in UPC has started Unified Patent Court competence Competent to hear cases concerning Infringement and non-infringement Provisional and protective measures Revocation and invalidity actions (including counterclaims) Damages for provisional protection Prior use Actions concerning registered license offers Actions concerning acts by EPO Not competent to hear cases concerning e.g. Inventorship disputes Compulsory licenses Awapatent AB/Niklas Mattsson 11

12 Unified Patent Court forum rules Country of infringement Local Division Regional Division Infringement action Country of defendant > 3 Reg. Div. Local Division Regional Division Central Division Action for revocation or noninfringement Central Division Unified Patent Court forum rules LD/RD proceeds with both claims Counterclaim for revocation brought to LD/RD handling infringement CD takes over both claims CD takes over counterclaim & LD/RD suspends or proceeds with infringement claim Awapatent AB/Niklas Mattsson 12

13 Unified Patent Court forum rules Action for revocation or for declaration of non-infringement Shall be brought before the central division If an infringement action is initiated after revocation/noninfringement action: Revocation proceedings at central division are stayed, and local/regional division decides how to handle Action for declaration of non-infringement stayed, if infringement action brought within three months Unified Patent Court languages One of the official languages of country hosting local division or countries sharing regional division States may designate one or more of official languages of EPO (FR, DE, GB) as the language of proceedings Parties may agree to use language in which patent was granted Language of proceedings of the central division is language in which patent was granted May result in one language for proceedings in infringement case and another language for proceedings concerning counterclaim at the central division Awapatent AB/Niklas Mattsson 13

14 Unified Patent Court representation Parties shall be represented by Lawyers authorized to practice before court of member state; and/or European Patent Attorneys with appropriate qualifications such as a European Patent Litigation Certificate Representatives may be assisted by patent attorneys Allowed to speak at hearings subject to conditions Client-attorney privilege applies Entry into force remaining hurdles/questions Not all EU apparently not a substantive problem. IT and ES have filed complaint against enhanced cooperation noone seems to worry about this CJEU opinion on unitary court has been resolved with minor amendments Representation no real consensus, but politicians not concerned Distribution and size of fees (in particular maintenance fees) Awapatent AB/Niklas Mattsson 14

15 Entry into force time line The European patent with Unitary Effect may be requested from 1 January 2014 or from the date of the entry into force of the Agreement on a Unified Patent Court, whichever is later The Agreement creating a Unified Patent Court will enter into force on 1 January 2014 or after thirteen contracting states ratify it, provided that UK, France and Germany are among them Ratified by Austria on 7 August 2013 Thank you for your attention! Questions are welcome! Awapatent AB/Niklas Mattsson 15