1. Unitary patent protection in the EU
Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l'Office européen des brevets
Unitary patent protection in the EU
Based on presentations of Francis Leyder, chair EPPC
12th March 2014
European Patent Institute

2. Future EU patent system
National patents
EU bundle patent
EU patent with unitary effect
Success will depend on:
Quality litigation system
Strategic decisions
EU bundle: choice per country
Unitary: all eggs stay longer in 1 basket
Costs
12th March 2014
European Patent Institute

3. Future EU patent system: Granting system
High quality Centralized Granting Organization: EPO
Substantive examination and granting
Coordination of activities with NPOs and epi:
Stimulation of inventions / Training / Access to patent information / General information to public
At local level support available, especially for SMEs:
EU patent attorneys (EPAs) access plus support
National Patent Offices (NPOs): general info and support
EPAs and NPOs work closely together
If you really want to do something you’ll find a way
If you don’t you’ll find an excuse
Anonymous
12th March 2014
European patent institute
European Patent Institute 3

4. European Patent Institute
Today: bundle patent
European patent application designating 38 States
Publication of the mention of the grant of the European patent
DE GB FR RO etc...
EPC Article 2 - European patent
(2) The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.
12th March 2014
European Patent Institute

5. European Patent Institute
The draft regulation: option Coexistence of national, EP patents and EP patents with unitary effect
European patent application designating 38 States
Publication of the mention of the grant of the European patent
Within 1 month: option to request unitary effect in the participating member States.
One condition: European patents that were granted with different sets of claims for different participating Member States shall not benefit from unitary effect (Art. 3(1)).
If NO, back to the previous slide.
If YES, see next slide.
12th March 2014
European Patent Institute

6. The draft regulation: bundle patent
European patent application designating 38 States
Publication of the mention of the grant of the European patent
Request for unitary effect in the participating member States
unitary effect in ES IT CH NO TR etc...
25 Member States non-participating outside EU
12th March 2014
European Patent Institute

7. The EPO retains a central role
Granting EP patents
Receiving requests for unitary patent protection
Managing the Register
Collecting renewal fees
12th March 2014
European Patent Institute

8. National offices have an essential role under the enhanced partnership
Use by the EPO of the result of searches carried out on national patent applications
Giving advice and support to potential patent applicants
Receiving and forwarding EP applications to the EPO
Disseminating patent information.
12th March 2014
European Patent Institute

9. European Patent Institute
Financial provisions
Level of renewal fees
sufficient not only to cover all costs [...] but also [...] to ensure a balanced budget of the European Patent Organisation
is equivalent to the level of renewal fee to be paid for the average geographical coverage of current European patents
Fair, equitable and relevant criteria for the distribution
number patent applications / size of market / minimum amount / compensation non-official EPO language / new EPC members
Compensation scheme
Reimbursing translation costs non official EPO language / available only for specific groups like SMEs, non-profit, universities in member states
12th March 2014
European Patent Institute

10. European patent with unitary effect in the participating Member States
: Select Committee (of the AC of the EPOrg)
adopted its Rules of Procedure
accepted the requests of epi and BusinessEurope to be granted observer status
SACEPO/WPR written consultation
Non-Paper = Draft Rules relating to UPP
Sub-Committee meeting
Non-Paper = Comments
th Select Committee meeting
Draft Rules relating to UPP
Rules 1 to 11 (of 22) discussed
12th March 2014
European Patent Institute

11. European patent with unitary effect in the participating Member States
: 5th Select Committee meeting
Presentations by EPO on financial issues (renewal fees)
Presentation by DG5 on the compensation scheme
reimbursement of all translation costs up to a ceiling, for applicants filing patent applications at the EPO in one of the official languages of the Union that is not an official language of the EPO, funded through the renewal fees and available only for SMEs etc having their residence or principal place of business within a Member State. [read: EU Member State]
Procedural aspects: declaration, amount, sanction
Sanction: administrative penalty fee?
No decisions on level of fees or compensation.
12th March 2014
European Patent Institute

12. European Patent Institute
European patent with unitary effect in the participating Member States
epi non-paper pleading for national measures to provide for an opportunity to validate the EP patent in any country to the extent that the unitary effect has been lost and the subject matter does not lack in novelty or inventive step in that country.
th Select Committee meeting
Draft Rules relating to unitary patent protection
Rules (of 22)
2nd reading of Rules 1-11 as amended
Draft Rules for the Compensation Scheme
Observer status of non-participating EPC member states
12th March 2014
European Patent Institute

13. European Patent Institute
European patent with unitary effect in the participating Member States
th Select Committee meeting (cont’d)
Issues relating to the UPP system in the Member States
A. Practical measures to ensure that a European patent does not take effect as a national patent where unitary effect is registered for that patent.
B. Entry into the register for unitary patent protection of information relating to compulsory licences.
C. National validation of a European patent where a request for unitary effect has been finally rejected.
D. National validation where a prior right is invoked against a European patent having unitary effect
12th March 2014
European Patent Institute

14. Have we reached the goal?
Not quite. Main hurdles:
Ratification of UPC & amendment of national law
Implementing Regulations (Select Committee)
Setting of the fees and distribution key (Select Committee)
Setting up the UPC (Preparatory Committee)
Amendment of the Brussels Regulation (EU)
SPC’s
Legal action by ES at the CJ EU against both regulations (22 March 2013; C-146/13 and C-147/13):
Case 9/56 Meroni v High Authority [1957-8] ECR 133
12th March 2014
European Patent Institute

15. European Patent Institute
European patent with unitary effect in the participating Member States
Next steps in which epi is involved
Unitary Patent sub-committee of EPPC
th Select Committee meeting
Legal questions
SC/6/14 Legal note by Prof Tilman
Papers uploaded in MICADO-U
th Select Committee meeting
Financial questions (to continue in October & December)
th Select Committee Meeting
Legal questions (with a hope that Rules can be adopted)
12th March 2014
European Patent Institute

16. European Patent Institute
European patent with unitary effect in the participating Member States
SC/6/ Prof Tilman
The participating Member States have already fulfilled the obligation under Art. 4 (2), 17(2) and 18(5) UPR by providing for a retroactive substitution of the unitary effect (Art. 4(1) UPR) for the Art. 64(1) EPC-effect.
Art. 3(1) UPR ("granted with the same set of claims in respect of all the participating Member States") only refers to the date of the grant. Art. 3(3) UPR ("The unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited") would clearly not destroy the unitary effect altogether or even the EP.
but what about Art. 3(2) UPR …
12th March 2014
European Patent Institute

17. European Patent Institute
ESAB workshop on the unitary patent
The EPO’s Economic and Scientific Advisory Board
workshop on the economic effects of the unitary patent and the UPC
No report is available
Independent study commissioned by ESAB:
to identify, quantify and understand the individual drivers behind the behaviour of market players in applying for unitary patents.
12th March 2014
European Patent Institute

18. Thank you for your attention!
Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l'Office européen des brevets
Thank you for your attention!
12th March 2014
European Patent Institute