1. UNITARY PATENT Challenges for the EPO - Advantages for the users Georg Artelsmair6 September 2012

2. 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

3. 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)

4. 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?)

5. 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

6. European patent application Filing and formalities examination Search report with preliminary opinion on patentability *) Grant of European patent Refusal or withdrawal of application Substantive examination The unitary patent as a European patent European patent with unitary effect in the territories of the 25 participating MS On request of the patent proprietor Limitation Revocation Opposition proceedings Appeal proceedings *) 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

7. 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

8. 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

9. 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

10. 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

11. 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

12. European patent and European patent with unitary effect Court of Appeal Central Division Local or Regional Divisions Court of First Instance Revocation actions Infringement actions European Court of Justice in case of litigation Appeal on Matters of Fact and Points of Law Preliminary Rulings on Union Law Unified Patent Court

13. 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

14. Thank you for your attention Georg Artelsmair Director, European Cooperation European Patent Office, Munich Tel: +49-89-2399 8989 E-mail: gartelsmair@epo.orggartelsmair@epo.org www.epo.org