UNITARY PATENT

Challenges for the EPO - Advantages for the users

Georg Artelsmair 6 September 2012

Unitary Patent - History

• 1975: Member States agree on a Community Patent Convention

– never ratified

• 1989: Member States agree on an Agreement relating to Community patents

– ratified only by DE, DK, FR, GR, LU, NL and UK

• 2000: Commission presents proposal for a Council Regulation on the Community patent (failed)

• From 1999 to 2006: Work on the draft EPLA - European Patent Litigation Agreement

• From 2007 to 2009: Work on the draft Agreement on the European Patent Court

Unitary Patent – Legal instruments

• Unitary Patent Protection (UPP, based on Enhanced Cooperation)

– Regulation of the European Parliament and the Council on unitary patent protection, and

– Regulation of the Council on translation arrangements

• Implementing rules at the level of the EPO

• Unified Patent Court (UPC)

– Agreement on UPC (international treaty between EU member states)

Unitary Patent – State of play

• Negotiations on the 2 draft Regulations on Unitary Patent Protection have reached an advanced stage

– Parliament and Council are currently seeking a compromise on a last outstanding issue (ruling of ECJ on substantive patent law)

• Once a compromise will have been found

– European Parliament is to adopt Regulation (Oct. 2012?)

– Council is to adopt Regulation

– Presidents of Parliament and Council are to sign Regulation (Dec. 2012?)

• Diplomatic Conference to be convened for adopting the Agreement on the Unified Patent Court (Autumn 2012?)

– Entry into force if ratified by at least 13 Contracting Member States, including DE, FR, UK (April 2014?)

Unitary patent protection – Basic concept

• European patents granted by the EPO under the rules and procedures of the EPC should, on request by the patent proprietor, benefit from unitary effect in the participating Member States

• European patents with unitary effect will co-exist with national patents and with classical European patents

Europeanpatentapplication

Filing andformalitiesexamination

Search report with preliminaryopinion onpatentability *)

Grant ofEuropeanpatent

Refusal or withdrawal of application

Substantiveexamination

The unitary patent as a European patent

European patent with unitary effect in the territories of the 25 participating MS

On request

of thepatent

proprietor

LimitationRevocationOppositionproceedings

Appealproceedings

*) The EPO delivers its search reports, including written opinion on patentability, in less than 10 months on average, and in less than 6 months for Euro-direct applications

Same grant procedure as for a classical European patent

The European patent is deemed not to have taken effect as a national patent in the 25 participating MS

Unitary effect conferred to European patents after grant

Unitary patent protection - New tasks for the EPO

• Registration of EP with unitary effect

• Centralised post-grant administration, including the collection of renewal fees

• Comprehensive post-grant Register

Unitary patent protection - challenges for the EPO and MS

• To be prepared – Target date referred to in Regulations is Jan. 2014!

• Discussion with Member States in a new "Select Committee" of the EPOrg

– inaugural meeting Spring 2013?

– financial sustainability: costs for EPO, level of renewal fees, distribution to MSs

• Proposals to be made for new rules and procedures

– registration of unitary effect

– receiving annual fees

– setting up Register

• New and integrated IT systems

Unitary patent protection - options for the users

• New option for patent proprietors– new "European patent with unitary effect" covering 25 EU

Member States in addition to national patent and classical EP

– Choice to be made after grant of EP by the EPO– EPC rules and procedures remain unchanged

Unitary Patent – Language arrangements

• No translation requirement after grant (beyond Art. 14(6) EPC)

– Patent translate: automatic machine translations for information purposes

• Translation in case of a dispute

– in the language and at the request of a court or of an alleged infringer

– cost borne by the patent proprietor

• Transitional measures: during a period of up to 12 years

• Reimbursement of translation costs of patent applications (up to a ceiling) filed in official languages of the Union other than English, French or German

Unified Patent Court - Latest proposal

• A specialised patent court common to the participating EU Member States dealing with disputes relating to

– classical European patents and

– European patents with unitary effect

• Court of First Instance and Court of Appeal

• Court of First Instance composed of

– a Central Division as well as several Local Divisions and Regional Divisions set up in the participating Member States

• Centralised Court of Appeal

Europeanpatent and European patent with

unitary effect

Court ofAppeal

CentralDivision

Local orRegionalDivisions

Court of First Instance

Revocationactions

Infringementactions

EuropeanCourt ofJusticein case of

litigationAppeal on

Matters of Fact and Points of Law

PreliminaryRulings onUnion Law

Unified Patent Court

SUMMARY

Present system

• High costs for patent proprietors

– post-grant translation costs

– national renewal fees

• Sub-optimal enforcement scheme

– multiple litigation

– diverging national decisions

– high costs

– legal uncertainty

Future system

• European patents with unitary effect

– lower translation costs

– centralised handling

• Unified Patent Court

– harmonised litigation

– harmonised decisions

– lower costs

– more leagal certainty

Thank you for your attention

Georg Artelsmair

Director, European CooperationEuropean Patent Office, MunichTel: +49-89-2399 8989E-mail: gartelsmair@epo.orgwww.epo.org