OEPM The European Patent with unitary effect: Gateway to a European Union Patent? Perspectives from non-participating member States. Raquel Sampedro Head of Legal and European & PCT Patents Division Spanish Patent and Trademark Office

OEPM Patent package Council Decision, of 10 March 2011, authorising enhanced cooperation in the area of the creation of unitary patent protection. Implemented by: Regulation of implementing enhanced cooperation in the area of the creation of unitary patent protection (Substantive Regulation) Regulation of implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements Agreement on the creation of a Unified Patent Court 2

OEPM Community/EU Patent Spain has always supported the creation of a community protection for patents. Accepted the Common Political Approach of 2003 Accepted the General Approach on December 2009 Translation of claims into all official languages The decision on the translation arrangements was delayed because of the entry into force of the Lisbon Treaty 3

OEPM Main features and Spanish position Spain has been opened to different solutions English only (rejected by some MMSS, arguing lost of competitiveness for their enterprises!) 3+1 (English, French and German and translation into a EU official language) 1+1 (English + applicant’s language, both with legal effect) OHIM language regime system (i.e. 5 languages: English, French, German, Spanish and Italian) 4

OEPM On the enchanced cooperation  Article 142 EPC reads “Any group of Contracting States, which has provided by a special agreement […]”  an agreement between States  A Community Regulation can be considered an agreement? According to Articles 288 TJEU and following, a Regulation is a legal act of the Union.  Can a Regulation be considered an agreement between Member States? The substantive Regulation constitutes a special agreement within the meaning of Article 142 EPC 5

OEPM On the language regime Spain considers that, if these “European Patents with unitary effect” are European intellectual property rights (Article TFEU), the EU linguistic system should apply; i.e.: The ECJ judgment “Kik” must apply: it should be possible to file a patent in any EU language and the EPO must use this filing language in all its communications. No doubts on the “real content” of any patent. Could you get it with “machine translations” without any legal effect? Fundamental right to defence and to a fair trial: Everyone has the right to be informed and to defend himself in a language which he understands. No later than one month after the publication of the mention of the grant, the proprietor has to submit a request for “unitary effect”. The European Patent is granted by the EPO in one of its language of the proceedings (English, French and German). No additional translations required after grant. 6

OEPM On the judiciary system Competence of the Court Actions for actual or threatened infringements of patents, at the election of the claimant, before: –the local division where the actual or threatened infringement has occurred or may occur, or –the local division where the defendant has his residence, or principal place of business Actions for revocation –Direct action: before the Central Division –In case of counterclaim for revocation: The local Division can: Proceed with both cases; Refer the counterclaim for decision to the central division and suspend or proceed with the infringement proceedings; or with agreement of the parties, refer the case for decision to the central division.  Freedom for the plaintiff to choose the most convenient court! 7

OEPM Consequences of the language regime and of the jurisdictional system for the Spanish industry? The language of the patent is essential for its dissemination, for actions against third parties and for the alleged infringer’s defence. Spanish enterprises will have to translate, to their own cost, to get sure they are not infringing. Having access to the patented technology is key for competitiveness: It is a loss of competitiveness for Spanish enterprises in relation to other enterprises that can use their language. If the proposed “English only system” is supposed to be a lost of competitiveness for companies that used to use other languages under the EPO system, how can it be defended that the three languages regime is not bad for Spanish enterprises? Spanish enterprises can be infringing a patent without knowing it. Spanish enterprises can be sued before courts chosen at the claimant’s best convenience, in an unknown language, very far away form their place of business. 8

OEPM Conclusions Spain is strongly committed with a EU patent as it strengths innovations in Europe. Spain just rejects the linguistic system: which considers discriminatory and legally insecure. Spain has always upheld a solution based in English only as the most extended technological language. –In case of use of more languages, Spanish must be included as one of the more spread languages. 9