Unitary patent protection in the EU

Unitary patent protection in the EU

Based on presentations of Francis Leyder, chair EPPC

Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent Office

Institut des mandataires agréés près l'Office européen des brevets

12th March 2014 European Patent Institute 1

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


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

3

If you really want to do something you’ll find a wayIf you don’t you’ll find an excuse

AnonymousEuropean patent institute12th March 2014European Patent Institute 3

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.


The draft regulation: optionCoexistence 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.


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


The EPO retains a central role

• Granting EP patents

• Receiving requests for unitary patent protection

• Managing the Register

• Collecting renewal fees


National offices have an essential roleunder the enhanced partnership

• 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.


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


European patent with unitary effect in the participating Member States

• 27.06.2013: 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– 28.06.2013 - Non-Paper = Draft Rules relating to UPP

– 23.07.2013 - Sub-Committee meeting

– 30.07.2013 - Non-Paper = Comments

• 18.09.2013 4th Select Committee meeting– 30.08.2013 - Draft Rules relating to UPP

– Rules 1 to 11 (of 22) discussed



• 30.10.2013: 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.


06.12.2013 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.

10-11.12.2013 6th Select Committee meeting• Draft Rules relating to unitary patent protection

– Rules 12-21 (of 22)– 2nd reading of Rules 1-11 as amended

• Draft Rules for the Compensation Scheme• Observer status of non-participating EPC member states



10-11.12.2013 6th 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



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


Next steps in which epi is involved• 25.03.2014 Unitary Patent sub-committee of EPPC • 26.03.2014 7th Select Committee meeting

– Legal questions

– 04.03.2014 SC/6/14 Legal note by Prof Tilman

– 07.03.2014 Papers uploaded in MICADO-U

• 26-27.05.2014 8th Select Committee meeting– Financial questions (to continue in October & December)

• 24.06.2014 9th Select Committee Meeting– Legal questions (with a hope that Rules can be adopted)



• SC/6/14 04.03.2014 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 …



The EPO’s Economic and Scientific Advisory Board• 03-04.12.2013 workshop on the economic effects of the

unitary patent and the UPC– No report is available

– http://www.epo.org/news-issues/news/2013/20131209.html

• Independent study commissioned by ESAB:– to identify, quantify and understand the individual drivers

behind the behaviour of market players in applying for unitary patents.

ESAB workshop on the unitary patent


http://www.epo.org/news-issues/news/2013/20131209.html

Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent Office

Institut des mandataires agréés près l'Office européen des brevets

Thank you for your attention!


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Unitary patent protection in the EU