UNITARY PATENT AND UNIFIED PATENT COURT: STATE OF … Patent and...REGULATIONS ON UNITARY PATENT PROTECTION 20 January 2013: Entry into force of two EU regulations Regulation (EU)

UNITARY PATENT AND UNIFIED PATENT COURT: STATE OF PLAY Stefan Luginbuehl Lawyer, International Legal Affairs, PCT European Patent Office, Munich

REGULATIONS ON UNITARY PATENT PROTECTION 20 January 2013: Entry into force of two EU regulations

Regulation (EU) No. 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements

For the 25 participating member states

REGULATIONS ON UNITARY PATENT PROTECTION Italy joined the enhanced co-operation scheme 2 October 2015.

Regulations (EU) No. 1257/2012 and (EU) No. 1260/2012 are now in force for 26 of the 28 EU member states (exceptions: Croatia and Spain).

They apply from the date of the entry into force of the Agreement on a Unified Patent Court (UPC Agreement).

AGREEMENT ON A UNIFIED PATENT COURT (UPC AGREEMENT) The UPC Agreement was signed on

19 February 2013 by 25 of the 28 EU member states (exceptions: Croatia, Poland and Spain).

It will enter into force after the deposit of the 13th instrument of ratification or accession (including France, Germany and the UK).

So far, nine states have deposited their instruments of ratification.

Several states have indicated their intention to ratify in the next few months.

Austria 7 August 2013

France 14 March 2014

Sweden 5 June 2014

Belgium 6 June 2014

Denmark 20 June 2014

Malta 9 December 2014

Luxembourg 22 May 2015

Portugal 28 August 2015

Finland 19 January 2016

THE UNITARY PATENT: CONCEPT The unitary patent is

“a European patent with unitary effect”.

It has unitary character throughout the territories of the 26 participating member states.

European patents will benefit from unitary effect at the request of the patentee.

There is a single EPC procedure for European and unitary patents”.

The application and examination procedures will remain unchanged.

THE UNITARY PATENT: CONCEPT The unitary patent will co-exist with national patents

and traditional European patents.

Various combinations of classical European patent and unitary patent: − a unitary patent for the 26 participating EU member states,

together with − a classic European patent taking effect in one or more EPC contracting

states (such as, for instance, Norway, Spain, Switzerland or Turkey)

No double protection by a unitary patent and a classic European patent on the territory of the 26 participating member states. Double protection by a unitary patent and a national patent is open and will be decided at national level.

Effect: unitary patent takes effect retroactively in the participating member states as from the date of publication of the mention of grant of the European patent.

REGULATIONS ON UNITARY PATENT PROTECTION

Filing and formalities examination

Search report with preliminary opinion on patentability

Substantive examination

Grant of European patent

Request of the patent proprietor

European patent with unitary effect in the territories of the 26 participating member states

European patent application

Refusal or withdrawal of application

Limitation Revocation Opposition proceedings

Appeal proceedings

Same grant procedure as for traditional European patents The European patent is deemed not to have taken effect as a national patent in the 26

participating member states

THE UNITARY PATENT: TRANSLATION ARRANGEMENTS Builds on EPO language regime (Article 14(6) EPC).

No further translations required after transitional period, unless a legal dispute arises.

Reliance on high-quality machine translations − for applications and specifications − to be available for free in all EU official languages − for information only (no legal effect)

THE UNITARY PATENT: THE SELECT COMMITTEE The Select Committee consists of representatives of the 26 participating

member states, as well as the European Commission, epi, BusinessEurope and EPC contracting states that are not participating in the enhanced co-operation scheme as observers.

Concluded main tasks in relation to the implementation of the unitary patent with the adoption of the “secondary legislation”: − Implementing rules relating to unitary patent protection − Rules relating to Fees − Budgetary and Financial Rules − Rules relating to the Distribution of Fees among the participating

member states

THE UNITARY PATENT: IMPLEMENTING RULES The Implementing Rules set out the details of:

− the registration of unitary effect and the tasks of the EPO related to it

− the tasks and competences of the Select Committee and the EPO President

− the entries in the Register for unitary patent protection

Consolidated version was adopted by the Select Committee on 15 December 2015.

www.epo.org/law-practice/unitary/unitary-patent.html

REGISTRATION OF UNITARY EFFECT SUBSTANTIVE REQUIREMENTS Unitary effect can only be requested for European patents that were granted

with the same set of claims in respect of all 26 participating member states

REGISTRATION OF UNITARY EFFECT FORMAL REQUIREMENTS

The patent proprietor must file a request for unitary patent protection with the EPO no later than one month after the mention of grant is published.

The request must be filed in writing in the language of the proceedings. It must include: − the name of the requester, the number of the European patent to which

unitary effect is to be attributed, and information about the representative, and – for the transitional period –

− a full English translation if the patent is granted in French or German, or

− a full translation into any language of the EU if the patent has been granted in English

REGISTRATION OF UNITARY EFFECT The EPO will register the unitary effect in the Register for unitary patent

protection and inform the requester if the substantive and formal requirements have been met.

It will reject the request if the substantive requirements have not been met or if the request is not filed in due time.

In the latter case, a request for restitutio in integrum may be filed within two months of expiry of a one-month period.

REGISTRATION OF UNITARY EFFECT If the request is filed in due time but at least one of the formal

requirements is not met, the EPO will invite the requester to correct the deficiencies within a non-extendable period of one month.

The request will be rejected if the deficiency is not corrected within this period.

Requesters can file an “appeal” with the Unified Patent Court (UPC) against the decision of the EPO.

RENEWAL FEES Single renewal fee for the unitary patent to be paid to the EPO.

− EPO retains 50%. − Remaining amount distributed in accordance with Article 146 EPC and

the key defining the participating member states' share.

December 2015: Select Committee adopts the Rules relating to Fees and thus the “TOP 4” proposal for renewal fees for European patents with unitary effect, as well as the key defining the participating member states' share.

“TOP 4” proposal involves charging the sum total of the national renewal fees payable in Germany, France, The Netherlands and the United Kingdom.

RENEWAL FEES: THE ADOPTED “TOP 4” APPROACH

2nd year: EUR 35

3rd year: EUR 105

4th year: EUR 145

5th year: EUR 315

6th year: EUR 475

7th year: EUR 630

8th year: EUR 815

9th year: EUR 990

10th year: EUR 1 175











Renewal fees reduced by 15% if patent holder registers a license of right.

UNIFIED PATENT COURT (UPC): STRUCTURE

Local divisions Examination

Regional divisions Examination

Court of First Instance

Court of appeal Luxembourg

Court of Justice of the EU Requests for preliminary rulings

Central division Paris (general) London (pharmaceuticals) Munich (engineering)

www.unified-patent-court.org/

UNIFIED PATENT COURT: LOCATIONS

Central Division Paris, London, Munich

Patent mediation and arbitration centres Lisbon, Ljubljana

Local/regional division(s) Brussels, Copenhagen, Dublin, Dusseldorf, Hamburg, Helsinki, Lisbon, London, Mannheim, Milan, Munich, Paris, Stockholm, The Hague, Vienna

Court of Appeal Luxembourg

Judicial Training Centre Budapest

JURISDICTION OF THE UPC AS REGARDS THE SUBJECT-MATTER Article 32 UPC Agreement

Exclusive jurisdiction in respect of actions for: Actual or threatened infringement of classic European

and unitary patents and Supplementary Protection Certificates (SPCs) and related defenses, including counterclaims concerning licences

Declarations of non-infringement of classic European and unitary patents

Revocation of classic European and unitary patents − by direct attack − by counter-claim

Declaration of invalidity of SPCs

Injunctions

JURISDICTION OF THE UPC AS REGARDS THE SUBJECT-MATTER Article 32 UPC Agreement

Exclusive jurisdiction in respect of actions

for provisional and protective measures

for damages or compensation

related to decisions of the EPO in carrying out the additional tasks entrusted to it in relation to the unitary patent

JURISDICTION OF NATIONAL COURTS NATIONAL COURTS

All actions relating to classic European patents and unitary patents which do not come within the exclusive jurisdiction of the UPC, such as

− Actions relating to the right to a patent, or − Actions relating to the transfer of a patent right

Parallel jurisdiction with UPC concerning disputes relating to classic European patents for transitional period of at least seven years.

Opt-out possibility with regard to European patent applications, classic European patents and SPCs, but not unitary patents.

THE PREPARATORY COMMITTEE The Committee is composed of the 25 UPC Agreement

signatory states, plus the European Commission, the EPO and others as observers.

Its discussions have covered: − Rules of Procedure of the UPC − Fee structure and ceiling of

recoverable costs − Budgetary rules − Rules governing the Registry − Rules on the European Patent

Litigation Certificate (EPLC) − Rules relating to mediation and

arbitration proceedings

− Training of candidate judges and recruitment procedure

− Judicial salaries and allowances

− Rules of proceedings of the different UPC committees

− Protocol on the provisional application of the UPC Agreement

PREPARATORY COMMITTEE: MAJOR STEPS February 2015: Start of the training of candidate

judges with the support of the EPO

May 2015: Consultation on Rules on Court Fees and recoverable costs

September 2015: Agreement on a draft proposal for rules on the European Patent Litigation Certificate (EPLC)

1 October 2015: Protocol on the provisional application of the UPC Agreement signed in Brussels

19 October 2015: Agreement on the draft Rules of Procedure of the UPC

THANK YOU FOR YOUR ATTENTION Stefan Luginbuehl, PhD Lawyer, International Legal Affairs, PCT European Patent Office, Munich

Tel. +49 89 2399-5290 Fax +49 89 2399-5219 email: [email protected]

www.epo.org

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UNITARY PATENT AND UNIFIED PATENT COURT: STATE OF … Patent and...REGULATIONS ON UNITARY PATENT PROTECTION 20 January 2013: Entry into force of two EU regulations Regulation (EU)