Category: Unitary Patent

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No Opt-Out Fee!!

As part of the recent amendment by the Preparatory Committee of Rule 370 of Procedure which deals with Court Fees and Recoverable Costs voted on 25th February 2016, it appears from the draft* published on the UPC website that there will be no fee for the opt-out! 

In fact, the Committee explains that processing the opt-out fee would generate an administrative cost for the Court. The Preparatory Committee being cautious of not burdening the applicant with a heavy fee for the opt-out, it therefore decided to remove the fee so as to remove the cost for the Court. The Committee also explains that having a no fee policy for the opt-out “also eliminates the problem of how to process payments particularly during provisional application.”

The decision not to charge for opt-outs seems also to have been motivated by the clear consensus on this issue which appeared in the different public consultations on the necessity to remove or lower the opt-out fee ” to reflect the commitment made by the Preparatory Committee that the fees for both the opt-out and its withdrawal are set to reclaim administrative costs only and that the Court would not profit from either of these.”

 

*The Rules on Court Fees and Recoverable costs were agreed by the Preparatory Committee but are subject to legal scrubbing. The definitive version should not however vary substantially from the version below. See page 17 for the paragraph on Opt-Out Fees.

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2016/02/agreed_and_final_r370_subject_to_legal_scrubbing_to_secretariat.pdf”]

 

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Distribution key of the renewal fee income adopted by the EPO:

On 17th November the European Patent Organisation adopted the distribution key for the repartition of the 50% share of the participating Member States in the renewal fee income among them.

In fact while the EPO retains 50% of the renewal fee income, its Select Committee had to decide how the apportionment of the 50% share of the Unitary patent renewal fees would be apportioned amongst the participating EU Member States.

According to Bristows “it has been agreed that for an initial period of operation the 50% of the fees (minus an administrative charge) will be distributed according to a formula that takes account of the GDP and the number of applications filed from each participating Member State.“

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The Select Committee has adopted the True Top 4 for the renewal fees of the Unitary Patent:

The Select Committee endorsed today the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The EPO reports that this proposal was adopted by the EU member states participating with the required 3/4 majority.

The True Top 4 proposal corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries (Germany, France, UK and the Netherlands), and contains a clause for possible revision after four years. Special consideration is also given to the situation of SMEs.

The True Top 4 proposal is divided as follow:

2nd year: 35 EUR12th year: 1, 775 EUR
3rd year: 105 EUR13th year: 2, 105 EUR
4th year: 145 EUR14th year: 2, 455 EUR
5th year: 315 EUR15th year: 2, 830 EUR
6th year: 475 EUR16th year: 3, 240 EUR
7th year: 630 EUR17th year: 3, 640 EUR
8th year: 815 EUR18th year: 4, 055 EUR
9th year: 990 EUR19th year: 4, 455 EUR
10th year:  1, 175 EUR20th year: 4, 855 EUR
11th year: 1, 560 EUR

This proposal was preferred to the True Top 5 for which the renewal fees matched the five most frequently validated countries (Germany, France, UK, Netherlands and Sweden) and foresaw a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions. Under Top 4 proposal the patentee will have to pay a total of EUR 35, 555, whereas under Top 5 the patentee would have faced an overall cost of EUR 41, 955 and EUR 40, 403 for respectively the normal and reduced levels.

Putting aside the fear that these fees are still too high for SMEs, it is good news to have a definite idea of renewal fees for the Unitary Patent as it should enable us all to anticipate better when Unitary Patents are the most relevant to patentees.

You can see our previous posts about the different proposals made by the EPO on renewal fees here (May 2015) and here (March 2015).

 

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A new update on Article 83 and its opt-out by the Preparatory Committee

Supplementary Protection Certificate

The Preparatory Committee published an update on Article 83 of the UPCA and the possibility of opting out. As a reminder, Article 83 states that:

“(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.

(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.

(5) Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a broad consultation with the users of the patent system and a survey on the number of European patents and supplementary protection certificates issued for products protected by European patents with respect to which actions for infringement or for revocation or declaration of invalidity are still brought before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to prolong the transitional period by up to seven years.”

The Q&A  of the Unified Patent Court’s website clarifies the provisions contained in article 83(1) and 83(3), and looks at whether Article 83 affects the exclusivity of the UPC’s jurisdiction and the duration of an opt-out.

What does the Preparatory Committee say about Article 83 and the exclusivity of jurisdiction?

The issue was whether Article 83 only concerned the exclusive jurisdiction of the UPC with the consequence that after the opt out the UPC would share its competence with national courts, or whether Article 83 should be read as totally removing the UPC’s competence once the patent was opted-out.

The Preparatory Committee makes clear that the intention of the legislator is that Article 83 gives the opportunity to patentees to  remove their patents entirely from the jurisdiction of the UPC. Therefore once the patent has been opted out, the parties only choice of forum will be national courts.

And what about the duration of the opt-out?

This was the second main issue about opt-outs. In fact with the present drafting of Article 83 (1) it is difficult to know whether the opt-out from the jurisdiction of the UPC for a classic European patent is only effective during the transitional period or whether, once it has been notified during the transitional period, it is effective for the whole life of the patent.

The Preparatory Committee states in unequivocal terms in the Q&A that the opt-out is valid for the whole life of the patent rather than just for the transitional period. Therefore the transitional period only corresponds to a period of time during which patentees have the possibility to either bring their actions for infringement or revocation before national courts, or decide to opt-out of the UPC so that their patents are only under the jurisdiction of national courts. The transitional period consequently does not impact the length of the opt-out but determines when the opt-out can take place, i.e. within the seven years (more if prolonged) set out by the UPCA.

See our post on the Transitional period and the Opt-out here.

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Unitary Patent Renewal fees: New adjustments by the EPO

The EPO published at the beginning of May two new proposals for an adjusted level of renewal fees for the European Patent with Unitary Effect, which were examined at the 14th meeting of the Select Committee of EU Participating Member States in the enhanced cooperation on Unitary Patent Protection. (See our post on the EPO’s first draft of the renewal fees here)

The EPO describes these two proposals in the following terms:

“These proposals foresee fee levels of respectively the equivalent of the renewal fees which have to be paid for the four or five countries out of the twenty-five EU participating member states in which most European patents are currently validated (a “true” TOP 4 and a “true” TOP 5- in contrast to the previous approach, the EPO’s internal renewal fees are no longer taken into account). The “true” TOP 5 proposal in addition foresees a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions. Member States held an exchange of views with some Member States not yet able to take a concrete position on these proposals.”

The question is therefore how do these new proposals differ from the first draft of renewal fees presented in March 2015 by the EPO. The first proposal had been criticized and judged inadequate for the ambitions of the Unitary Patent. The level of renewal fees for the first ten years of the unitary patent had in fact been established by reference to the EPO’s internal renewal fees payable to the EPO before grant while the application is pending, rather than by reference to the renewal fees payable to national patent offices for a similar patent. Renewal fees only matched the fees payable for 4 (TOP 4: Germany, France, Great Britain, and the Netherlands) or 5 (TOP 5: Germany, France, Great Britain, the Netherlands and Sweden) top validation countries for European Patents after year 10.

The new proposals took into consideration these criticisms, and national renewal fees for Top 4 and Top 5 thus now form the basis of the proposed Unitary Patent renewal fees from years 2 to 20. This created reduce fee levels for patent years 2 to 9.  In addition, in the true TOP 5, the 25% SME reduction in years 2 to 10 and the 15% licenses of right reduction remain.

So what are the new adjusted fees? (See SC/18/15)

For Top 4 level, over 20 years the sum total of the fees would be EUR 35, 555 divided as follow:

2nd year: 35 EUR

3rd year: 105 EUR

4th year: 145EUR

5th year: 315 EUR

6th year: 475 EUR

7th year: 630 EUR

8th year: 815 EUR

9th year: 990EUR

10th year:  1, 175 EUR

11th year: 1, 560 EUR

12th year: 1, 775 EUR

13th year: 2, 105 EUR

14th year: 2, 455 EUR

15th year: 2, 830 EUR

16th year: 3, 240 EUR

17th year: 3, 640 EUR

18th year: 4, 055 EUR

19th year: 4, 455 EUR

20th year: 4, 855 EUR

This is to be contrasted with the total of 37,995 EUR, which means that under the adjusted fees the patent owner would save 2,440 EUR. (See our post on the first version of Court fees here)

For Top 5 level, over 20 years the sum total of the fees would be 41, 955 EUR and 40, 403 EUR for the normal and reduced levels. The Reduced fees correspond to a 25% reduction from years 2 to 10 for SMEs, natural persons, NGOs, Universities and public research organisations. The fees would be divided as follows (the amounts after the 25% reduction for SMEs and other entities are shown in brackets, in italics):

2nd year: 85 EUR (63.75 EUR)

3rd year: 165 EUR (123.75 EUR)

 4th year: 255 EUR (191.25 EUR)

 5th year: 455 EUR (341.25 EUR)

 6th year: 645 EUR (483.75 EUR)

 7th year: 825 EUR (618.75 EUR)

 8th year: 1 050 EUR (787.50 EUR)

 9th year: 1 255 EUR (941.25 EUR)

 10th year: 1 475 EUR (1 106.25 EUR)

11th year: 1 790 EUR

12th year: 2 140 EUR

13th year: 2 510 EUR

14th year: 2 895 EUR

15th year: 3 300 EUR

16th year: 3 740 EUR

17th year: 4 175 EUR

18th year: 4 630 EUR

19th year: 5 065 EUR

20th year: 5 500 EUR

Therefore a patent owner would save 1,670 EUR (or 1, 252 EUR for the reduced fees) compared to the first version of the court fees established by the EPO.

The EPO also published a second document (SC/19/15) comparing the fees and external costs of a European Patent validated in 1 to 25 countries and a Unitary Patent (based on the adjusted fees). This document shows that the Unitary Patent is only financially interesting for patentees who wish to register their patent in more than 3 countries for TOP 4 and 4 countries for TOP 5.

Paradoxically however 64% of European Patents are only validated for a maximum of 3 countries, while only 0.4% of European Patents are validated for 25 countries. It is nonetheless impossible to know from these figures whether the overall cost of the Unitary Patent will encourage patentees to choose the Unitary Patent above the European Patent or whether there is a genuine majority of patents, which only require a validation in 3 or less countries.

These adjusted fees have already been criticised by the American Intellectual Property Law Association and the EUROCHAMBRES. The AIPLA in fact wrote to the EPO to express concerns about the adjusted fees that it considers to be still to high in comparison with costs in the Americas and in Asia. AIPLA argues for example that “the current TOP 4 proposal would cost at least 3 times more over the life of a Unitary Patent than renewals of a U.S patent, an the UP will not cover all EPO countries or even all EU states.”

The Euro Chambres of Commerce and Industry notes that the fee for the “True TOP 5 with reduced fees” only equals a 4% reduction from the first draft of the Unitary Patent Court fees. These adjustments therefore do not represent a real economy for the SME that the EUROCHAMBRES represent, especially compared to the U.S where a 50% reduced fee is applied at renewal. The EUROCHAMBRES president Arnaldo Abruzzini defends the idea –shared by others, see notably this post– that the renewal fees are set up in accordance with the needs of the national patent offices in mind rather than in accordance with the principles of competitiveness and attractiveness., and therefore at the detriment of businesses.

Finally, as highlighted by the IPKat, when looking at the distribution of the reductions of the renewal fees, it can be noted that these reductions apply disproportionately to the early years of the patent. This means that these reductions benefit in particular industries with short product lifecycles where patents are less likely to be maintained after the first ten years.

It is now to the Select Committee to decide the exact level of renewal fees which will apply and the UPC Blog by LAVOIX will keep a close eye on this topic.

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A new coalition of companies against the threat of patent trolls before the Unified Patent Court

What are the amendments proposed by the UPC Industry Coalition? 

The issue of Patent Trolls and the strong opposition of certain companies to the separation between infringement and validity actions, modelled on the German Court structure, have arisen already a few times since the UPC was announced. Groups of companies published open letters addressed to the UPC expressing their concerns while some participated to the open review of the UPC Rules of Procedure. The UPC Blog covered some of these initiatives here and here.

The UPC Industry Coalition however distinguishes itself by uniting major IP actors such as Microsoft and Google with small and medium European companies such as Elkamet or Planisware.  Both categories of stakeholders have joined in and publically appealed the UPC and its Select and Preparatory Committee to modify certain rules of procedure to allow a stronger protection against abuses from “unprincipled plaintiffs”.

These companies identify on their website two supposed threats within the UPC Rules of Procedure:

  • The first one is the injunction gap or “the gap of time during which the products of a company can be barred from the EU market despite a pending question about the patent’s validity” caused by the bifurcation of infringement and validity actions decided by two different courts in two different countries. The fear expressed by these companies is that patent trolls will use the injunction gap to force SMEs to “pay excessively high settlements (even on potentially invalid patents) diverting those precious resources from R&D and other critical uses.” In fact, for the UPC Industry Coalition, the risk for SMEs to have their products removed from the market while waiting for the validity of the patent to be assessed by the court could be life threatening. Against this potential risk the signatories recommend that “validity should be decided before or at the same time as infringement, or the remedy from the injunction decision should be stayed until after the pending validity issue has been decided”.

In their position paper on the Unified Patent Court draft rules of procedure dated 26 November 2014, the Industry Coalition makes three specific proposals to address this issue:

(1)  Expedited Revocation ruling: this option would encourage the revocation Court to issue the substance of its decision before the infringement decision. In fact, “by informing the parties of its decision as soon after the oral hearing as possible, the revocation Court can minimize the possibility that an injunctive remedy will be imposed on an invalid patent.” Rule 40 on “Accelerated proceedings before the central division” however would need to be amended, so that it expressly states that the Judge Rapporteur should only issue a revocation decision after the oral hearing. The proposed amendment can be seen here.

(2)  Enforcement Only After Revocation is completed: This option would prevent enforcement of any injunctive relief until the central division completes the revocation proceedings or in other words would prevent the execution of injunctions or seizures based on the infringement of a patent that may later be declared invalid. According to the UPC Industry Coalition “ensuring that injunctions and seizures are not enforced until any pending validity issues between the parties have been resolved prevents numerous public and private harms, including abusive litigation and the waste of public and private resources”. This option would imply amending rule 37 on the “Application of Article 33(3) of the Agreement” so that remedies are not enforceable on invalid patents. The amendment can be seen here.

(3)  Bond Requirement: This option would require the patentee to post a bond before the Court enforces any injunctive relief when the central division has not yet ruled on the pending revocation issue. The bond amount, which would be left to the discretion of the Court, would have to be sufficient to compensate the accused infringer for any harm suffered by the unwarranted imposition of injunctive relief if the patent concerned is later determined to be invalid. Rule 352 “Binding effect of decisions or order subject to security” would then need to be amended so that permanent injunctions or corrective measures taken in infringement proceedings are not ordered without a security in place. The amendment can be seen here.

  • The second alleged threat that this coalition wishes to prevent is “the lack of discretion and guidance on proportionality for injunctions”. In fact, according to the members of the UPC Industry Coalition “the latest draft of the UPC Rules of Procedure severely limits the judicial discretion to consider the individual facts of the case and to tailor injunctions accordingly.” This would be due to the increasing number of patents used in products. An injunction could thus permit “the most trivial of patents to bar far more significant products from the near EU-wide market”, which would of course have a disproportionate impact on the business of SMEs. Hence, the coalition argues that “although the patent itself may contribute only insignificantly to the entire product, by providing an injunction on the entire product, the patent holder essentially is credited with 100% of the product value. Thus, even trivial patents that contribute insubstantially to a product can exert tremendous business leverage on a company”. The UPC Industry Coalition thus concludes that the absence of discretion and direction for Judges to consider the proportional harm and fairness to the parties when granting injunctions will permit “unprincipled plaintiffs to force high royalties through settlements, royalties that far outstrip the actual value contributed by the patent.” In its open letter to the Preparatory and Select Committee commenting dated 26 November 2014, the UPC Industry Coalition therefore suggests an amendment of rule 118 “Decision on the merits” so that the Court would be compelled to have regard to the principles of fairness, flexibility, proportionality and equity when making a decision on whether to grant or not an injunction.

 

So what do we think at the UPC blog about these suggested amendments and the threats that patent trolls may derail the UPC?

It seems to us that it is regrettable that the treaty allows bifurcation as the UPC procedure is quick enough to eliminate by itself the slowness caused by a defense based on the invalidity of the patent.

Practically, the bifurcation seems attractive to us only in the absence of a technical judge within a local or regional division for such a case.

If there was any abuse of the bifurcation, by Trolls or other patentees (Trolls are in fact not the only one to abuse the bifurcation system, other patentees may misappropriate it too), it will always be possible to the UPC to create its own jurisprudence and to equip itself with appropriate counter measures.

In this respect, the propositions published by the UPC Industry Coalition, and in particular the bond requirement, appear to us judicious.

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Renewal fees for the Unitary Patent: What does the EPO suggest?

The IPKat has published a post this week (09/03/15) on the Unitary Patent’s renewal fees that raises important questions for the cost and the attractiveness of Unitary Patents. Renewal fees have in fact always been a hot topic as the cost of obtaining a Unitary Patent and renewing it might weigh heavily in the decision of the patentee as to which kind of patent to get. This is also particularly relevant in a context where Italy and Spain, two popular validation countries, will not take part in the UPC with the consequence that additional fees will have to be paid for both countries.

Moreover, renewal fees are central to the functioning of the European Patent Organisation (EPO), which is partly dependent on this income for its budget, as provided in Chapter Five of the European Patent Convention on Financial Provisions. Article 39 in particular states that “Each Contracting State shall pay to the Organisation in respect of each renewal fee received for a European patent in that State an amount equal to a proportion of that fee, to be fixed by the Administrative Council; the proportion shall not exceed 75% and shall be the same for all Contracting States.”  This amount shall following Article 40 be fixed at such a level as to ensure that the revenue is sufficient for the budget of the Organisation to be balanced.

To this effect, the Unified Patent Court’s Select Committee launched at its 11th meeting -that took place in December 2014- preparatory work on the “distribution key for the repartition of renewal fees between the EU participating member states”, on the basis of “additional simulations of fee level scenarios submitted by the EPO”.

Therefore, although not yet public and consequently unverifiable, the document referred to by the IPKat, entitled “Proposals for the level of renewal fees for European patents with unitary effect“, sheds light onto the fee structure that could apply to the renewal of the Unitary Patent’ fees.

But what are EU Regulations saying about renewal fees? Before looking into the data published by the IPKat and their analysis, let’s look at what Regulation (EU) No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection dated 17 December 2012 says.

Article 12 of this Regulation states that:

“1. Renewal fees for European patents with unitary effect shall be:

(a) progressive throughout the term of the unitary patent protection;

(b) sufficient to cover all costs associated with the grant of the European patent and the administration of the unitary patent protection; and

(c) sufficient, together with the fees to be paid to the European Patent Organisation during the pre-grant stage, to ensure a balanced budget of the European Patent Organisation.

2. The level of the renewal fees shall be set, taking into account, among others, the situation of specific entities such as small and medium-sized enterprises, with the aim of:

(a) facilitating innovation and fostering the competitiveness of European businesses;

(b) reflecting the size of the market covered by the patent; and

(c) being similar to the level of the national renewal fees for an average European patent taking effect in the participating Member States at the time the level of the renewal fees is first set.

 3. In order to attain the objectives set out in this Chapter, the level of renewal fees shall be set at a level that:

(a) is equivalent to the level of the renewal fee to be paid for the average geographical coverage of current European patents;

(b) reflects the renewal rate of current European patents; and

(c) reflects the number of requests for unitary effect.”

Hence, according to the IPKat, in order to reconcile the imperatives of a balanced budget and an attractive cost for renewal, the EPO would have adopted the following structure for setting Unitary Patent’s renewal fees:

“Years 3 to 5: the level of the EPO’s internal renewal fees (IRF) [these are the fees payable to the EPO for pending patent applications currently] 

Years 6 to 9: a transitional level between the IRF level and the year 10 level 

 From year 10, a level equivalent to the total sum of the national renewal fees payable in the states in which European patents are most frequently validated (TOP level).”

 

So what does it mean? Between years 3 and 5, the renewals applicable to a Unitary Patent would correspond to the same fee level as those applicable to European Patent applications; thus ensuring consistency in the application of the fees in the pre and post grant phases. In fact, as highlighted by the IPKat, charging a renewal fee for the first few years of the patent could discourage patentees to opt for a Unitary Patent, especially as “in some states, national renewal fees (which apply equally to national patents and to European patents validated in those states) are initially very low or non-existent until the fourth or fifth year.”

Moreover, the document that the IPKat had access to appears to argue that paying the total sum for national countries (three to five) might initially look more attractive in terms of costs than paying the internal renewal fees. The EPO however seems to point out in this document that the cost of hiring a local patent attorney or a specialist renewal firm would add to the final cost of renewal, with the consequence that the difference between the renewal costs of a Unitary Patent and those of a European Patent would be very small.

The three-tier fee structure proposed would then be divided between years 3-5, years 6-9 and years 10-20. For years 10-20 the calculations for the level would be based on the total of national renewal fees payable in the most frequently validated countries. But as the IPKat explains, “in the classical European patent system, patentees who have validated their patent in an average number of states after grant can always abandon the protection state-by-state over the patent term, and in the later years often narrow it down to the three major European markets. As they will lose this flexibility under the Unitary Patent protection in 25 states, they might be discouraged from opting for unitary protection if the fees for the last five years are prohibitive compared with those for just three to five of the bigger countries.” The EPO however seems to have taken this issue into consideration and for years 10 onwards, it proposes to charge the total sum of national renewal fees payable in the most frequently validated states, thus significantly reducing costs for users as their additional fee-administration charges will be considerably lower.

Following these observations and with the necessity to render the Unitary Patent cost-efficient for patentees in mind, two proposals have apparently been made. In the first one the years 10 onwards level would be based on current renewal fee levels for four European countries (TOP 4 level). In the second one the years 10 onwards level would be based on current renewal fee levels for five European countries (TOP 5 level) but with a reduction for certain categories of patentees, namely SMEs, natural persons, non-profit organisations, universities and public research organisations.

The IPKat gives the following numbers for TOP 4 and TOP 5 levels and provides us with a table presented as “the Annex 2 which compares the “Top 4” and “Top 5” proposal with the current EPO internal fees for pending applications, and the national renewal fees for 25 member states”:

“The TOP 4 level renewal fees would be as follows:

2nd year: EUR 350

3rd year: EUR 465

4th year: EUR 580

5th year: EUR 810

6th year: EUR 855

7th year: EUR 900

8th year: EUR 970

9th year: EUR 1 020

10th year: EUR 1 175

11th year: EUR 1 460

12th year: EUR 1 775

13th year: EUR 2 105

14th year: EUR 2 455

15th year: EUR 2 830

16th year: EUR 3 240

17th year: EUR 3 640

18th year: EUR 4 055

19th year: EUR 4 455

20th year: EUR 4 855

Over 20 years, that adds up to EUR 37 995.

 

The TOP 5 proposal involves a 25% reduction for the entities mentioned above in respect of years 2 to 10 only.  The proposed fees are as follows with the fee reduction in brackets:

 2nd year: EUR 350 (EUR 262.50)

3rd year: EUR 465 (EUR 348.75)

4th year: EUR 580 (EUR 435.00)

5th year: EUR 810 (EUR 607.50)

6th year: EUR 880 (EUR 660.00)

7th year: EUR 950 (EUR 712.50)

8th year: EUR 1 110 (EUR 832.50)

9th year: EUR 1 260 (EUR 945.00)

10th year: EUR 1 475 (EUR 1 106.25)

11th year: EUR 1 790

12th year: EUR 2 140

13th year: EUR 2 510

14th year: EUR 2 895

15th year: EUR 3 300

16th year: EUR 3 740

17th year: EUR 4 175

18th year: EUR 4 630

19th year: EUR 5 065

20th year: EUR 5 500

Over 20 years, that adds up to EUR 43 625 and EUR 41 655 for the normal and reduced level respectively.

  

Renewal Fees Table:

in € per OY             TOP4               TOP5          SME            EPO Internal renewal fees    25 MS

2                                     350                      350            252.50                              0                                            0

3                                     465                      465            348.75                          465                                         1,298

4                                     580                      580                 435                         580                                          1,874

 5                                    810                       810           607.50                         810                                         2,545

6                                     855                      880                660                        1,040                                         3,271

7                                     900                      950           712.50                         1,155                                         3,886

8                                     970                      1110         832.50                         1265                                          4,625

 9                                  1020                     1260               945                        1380                                           5,513

10                                  1175                     1475        1106.25                         1560                                           6,416

11                                 1460                      1790             1790                        1560                                           7,424

12                                 1775                      2140             2140                        1560                                          8,473

13                                 2105                      2510            2510                        1560                                           9,594

14                                2455                      2895            2895                        1560                                          10,741

15                                2830                      3300           3300                        1560                                          11,917

16                                3240                      3740            3740                        1560                                         13,369

17                                3640                    44175             4175                        1560                                          14,753

18                               4055                      4630            4630                        1560                                          16,065

19                               4455                       5065           5065                         1560                                         17,660

20                              4855                       5500           5500                         1560                                         19,197

Total                   37,995                  43,625       41,655                    23,855                                   158,621

So what should we conclude from these different fees? It appears from this table that the Unitary Patent will not be financially attractive for patentees who wish to have a protection for less than 4 states, such as the UK, Germany and France. For users who on the contrary wish to get protection for at least four countries, and a fortiori for a large number of countries, then the Unitary Patent would be cost efficient and thus attractive. We thus fully agree with the IPKat who points out that many users would have liked the EPO to draft a TOP 3 –or lower- level. However, according to the EPO’s communiqué dated 15 December 2014, we will only have to wait until June to find out the exact content of  “the appropriate decisions on the financial and budgetary aspects of the implementation of the Unitary Patent Protection”…

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Can European Patent Attorneys represent parties before the UPC?

The role of representation of European patent attorneys before the UPC

 

According to article 48 of the Agreement on the Unified Patent Court (UPCA), there is an obligation for parties to be represented. Article 48(1) provides for the representation by a “lawyer” authorized to practice before a court of an EU Member State as a general principle, whereas under article 48(2), European patent attorneys authorized before the EPO under A.134 EPC may represent parties before the Unified Patent Court (UPC), provided “they have appropriate qualifications such as European patent litigation certificate”.

 

This language suggests that such Certificate is only one appropriate way among others to acquire the right of representation before the UPC for European patent attorneys.

 

The Administrative Committee issued Draft Rules (http://www.unified-patent-court.org/images/documents/draft-eplc-consultation.pdf) on the Certificate and other appropriate qualifications (hereafter the Draft) in March 2014, as well as a Memorandum on this Draft (http://www.unified-patent-court.org/images/documents/draft-eplc-consultation-memorandum.pdf).

 

The Draft was open to a public consultation over last summer. The content of the current Draft, the Memorandum and the public consultation is discussed below.

 

 

A) The European Patent Litigation Certificate

 

Part one of the Draft relates to the courses leading to the Certificate and the suitable institutions running such courses.

 

The minimum duration of the courses shall be 120 hours (rule 4) and be concluded by both written and oral examinations.

 

The draft EPLC decision stipulates that the Certificate will be issued by universities or other non-profit educational bodies of higher education in Contracting Members States, subject to an accreditation requirement. The Memorandum makes it clear that the institutions providing the courses leading to the Certificate shall not be commercial providers of courses and conferences. Instead, the institutions should be public bodies at an academic level of a university, “due to the public law nature of granting Certificates and in order to ensure a satisfactory and harmonized quality level”.

 

It is to be noted that the Training Center for Judges (in Budapest) may organize a course for European Patent Attorneys and it shall not need an accreditation to provide such course.

 

 

B) The other qualifications

 

As an alternative to the Certificate, European Patent Attorneys seeking to represent parties before the UPC may apply for recognition of their qualifications.

 

Part two of the draft EPLC decision identifies two particular circumstances on the basis of which such alternative qualifications may be recognized:

 

1) Law diplomas (Rule 11)

 

European patent attorneys holding a bachelor or master degree in law or who have passed an equivalent state exam in law of a Member State of the European Union shall be deemed to have appropriate qualifications.

It is to be noted that the suitable law diplomas are not listed as such in the Memorandum. They are merely defined as “providing the necessary knowledge of private and procedural law required to conduct patent litigation”. The “equivalence” will probably have to be considered by an appropriate body on as case by case basis when deciding upon the registration on the list of entitled representatives.

 

Further, it seems that the diplomas may originate from any Member State of the European Union, and are not limited to those of the UPC Contracting Member States, let alone those States having ratified the UPC.

 

Further, and more importantly, these alternative qualifications are to apply indefinitely and are not meant to be transitional, contrary to the interim measures set out under item 2b) below.

 

 

2) The transitional period (Rule 12)

 

Rule 12 of the Draft provides a period of three years from the entry into force of the UPCA, during which European Patent Attorneys may apply for the right of representation before the UPC, based on the two further sets of appropriate qualifications:

 

(a)  Successful completion of one of existing identified IP courses

or

(b)  Previous experience in patent litigation.

 

 

The list of appropriate existing courses under (a) is currently as follows:

 

(i)             CEIPI: courses leading to the Diploma on Patent Litigation in Europe or to the Diploma of international studies in industrial property (specialized in patent);

(ii)            FernUniversität in Hagen: course “Law for Patent Attorneys”;

(iii)           Nottingham Law School: course “Intellectual Property Litigation and Advocacy”;

(iv)          Queen Mary College London: courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;

(v)           Brunel University London: course “Intellectual Property Law Postgraduate Certificate”;

(vi)          Bournemouth University, course “Intellectual Property Postgraduate Certificate”;

[…]

This list of courses is thus not exhaustive and may be further completed. One will note the variety of the courses, some providing basic knowledge in IP, some others being quite advanced and dedicated to litigation.

 

The appropriate qualifications under item (b) are defined as the previous representation of a party, without the assistance of a lawyer, in at least three patent infringement actions initiated before a national court of a Contracting Member State within the five years preceding the application for registration on the list of the entitled representatives.

The experience in representing parties is to be evidenced when applying for the request for recognition of other appropriate qualifications (see Rule 14).

Evidence will include details necessary to identify the infringement actions and/or copies of the power of attorney.

This option under (b) will however not be available to some European patent attorneys, depending on the national law (for example in France, where representation of parties before a national court is only opened to lawyers).

 

C) The public consultation

The consultation on the Draft closed on 25 July 2014. Comments on the Draft were filed by various representation bodies of European patent attorneys, including The Council of Bars and Law Societies of Europe (CCBE), The European Patent Litigators Association (EPLIT),The IP Federation, National bodies of Patent Attorneys such as The Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) and the Chartered Institute of Patent Attorneys (CIPA).

Broadly speaking, and as expected, the views are that the scope of the Draft is either too broad or overly limited, depending on the bodies and as far as representation by European patent attorneys is concerned.

The submissions of the Public Consultation are currently reviewed by the Committee. According to the latest Preparatory Committee roadmap (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf), a revised version of the Draft is to be expected for early 2015.

 

D) Right of audience

 

In addition to any rights of representation, “patent attorneys” will also be entitled to a right of audience under A.48(4) UPCA, by assisting the representatives.

 

The term “patent attorneys” is here to be construed in light of the Rules of Procedure.

 

According to the 17th Draft (http://www.unified-patent-court.org/images/documents/UPC_Rules_of_Procedure_17th_Draft.pdf), we understand that rule 292 now provides that the “patent attorneys” entitled to the right of audience should be practicing in a Contracting Member State, as a prerequisite.

 

This may include European Patent Attorneys registered before the EPO (draft rule 292.1 combined with draft rule 287.7), as well as any “person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice” (draft rule 292(1) combined with draft rule 287.6(b)).

 

These latest draft proposals differ from those of the 15th draft in that they now recite the additional requirement that the professionals should practice in a Contracting Member State in order to be entitled to the right of audience. This provision thus seems to exclude from the right of audience the lawyers and patent attorneys of a party which do not practice in the 25 Member States parties to the UPCA.

 

Incidentally, the “lawyers” authorized to represent parties before the UPC in article 48(1) are those authorized to practice before a court of an EU Member State and seem to be further limited to national of EU Member States under Rule 286 and Directive 98/5/EC (http://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:31998L0005).

 

It thus seems that non-EU nationals having a title of lawyer in the sense Directive 98/5, such as French avocat or German Rechstanwalt and practicing in an EU Member State may not be able to represent parties before the UPC, although they may have a right of audience.

 

Patent attorneys entitled to the right of audience will be allowed to speak at hearings of the Court at the discretion of the Court and subject to the representative’s responsibility to coordinate the presentation of a party’s case. They will benefit from the attorney-client privilege provided by draft rule 287.

 

These provisions will have to be confirmed once the 17th draft meets agreement, which according to the roadmap of September 2014 (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf) should be expected for May 2015

We shall post the developments as they occur.

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Damages and the Unified Patent Court Agreement: how is it going to work?

Supplementary Protection Certificate

Here is a new presentation (in French) on Damages and the Unified Patent Court. It was given by Cyrille Amar for an AIPPI webinar on 19th January 2015.

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Presentation-Damages-pptx.pdf”]

 

And its English counterpart:

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Presentation-Damages-en.pdf”]

 

The UPC Blog would be happy to discuss any of the issues raised in the presentation! You can contact us either by email upcblog@lavoix.eu,  via the Comments section below or by Twitter @UPCBlogLAVOIX.