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How to get Unitary Patent protection?

The Steps to get a unitary patent protection?

This is a two steps procedure:

1/ First apply for a EP patent with the EPO
The filing procedure , examination and grant formalities are similar in any way to those of a regular EP patent.
Any person may file a patent application, in any language, provided that a translation into one of the three official languages of the EPO (french, german or english) is filed within two months of the date of filing. The language of the translation will be the language of the proceedings. The patent is published in the language of the proceedings and the claims are translated into the two other official languages.

2/Then, upon grant of the EP patent: the request for the unitary effect

Unitary patent protection will only be available for EP patent granted on or after the date of entry into force of the UPC Agreement (A. 18(6) of Reg. (EU) N° 1257/2012, and having the same set of claims in respect of all the participating Member States.

The patent proprietor shall apply with the EPO for  the unitary protection within one month from the publication of the mention of grant of the EP patent in the European Patent Bulletin . The request shall be filed in the language of proceedings of the EP patent (A.9(g) of Reg. (EU) 1257/2012).
The unitary effect will be indicated in the Register for unitary patent protection, administered by the EPO.

The EPO is currently developing machine translations of patent specifications into all of the official languages of the Union. Therefore, no further translations of the EP patent will be required from the patent proprietor after the end of the transitional period of 6 years (up to 12 years), except in the event of a dispute.
During the transitional period, if the patent is in english, the specification must be translated into any other official language of the Union; if however the patent is in french or german, it shall be translated into english.

The EPO will also administer a compensation scheme for the reimbursement of translation costs for some applicants filing the EP application in one of the official languages of the Union that is not an official language of the EPO. Applicants eligible for the compensation scheme include SMEs, non-profit organisations, universities, individual having their residence or principal place of business within a Member State.

 

Renewals in respect of the years following the year in which the mention of the grant is published in the European Bulletin will have to be paid with the EPO. There will be a 6 months period for late payment of the renewal and corresponding additional fees.
Can software be patented under the new rules? Will the rules governing patent ability for software change?

No. The unitary patent package will not change the rules on granting a patent, but only the geographic extent of the legal protection that a patent affords, once it has been granted.

 

(G) Fees

The fees for the Unitary Patent are yet to be decided. The criteria for setting the fees can be found at Article 12 of the Unitary Patent regulation. The process will need to take into account administration costs, the size of the market and the level of fees paid for current European bundle patents.

According to the European Parliament, today, a European patent issued by EPO providing protection in the 27 EU Member States can cost up to €36,000, including up to €23,000 in translation fees alone. According to the European Commission, the new unitary patent will cost a minimum of €4,725, when the new rules are fully implemented, up to a maximum of €6,425. The costs for translation will range from €680 to €2,380.

 

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Supplementary Protection Certificates, European Patents, and Unitary Patents: How is it going to work after the entry into force of the UPC?

Supplementary Protection Certificates ensure the recovery of high investments necessary over a long development period to bring a successful innovative product to the market. SPCs in particular are critical for the agrochemical, pharmaceutical and medical devices industries which rely heavily on industrial protection through patents and SPCs. Existing SPCs complement national or European patents to ensure an extra period – up to five years – of protection for patent holders, to offset the time required to obtain marketing authorisation for their patented products.

The entry into force of the UPC will however bring major changes to SPCs as well as European Patents.  This post therefore looks at the provisions in the UPCA and the Rules of Procedure which deal with SPCs; the impact of these provisions on SPCs, European Patents and Unitary Patents; the issues raised by these changes; and finally the project of a unitary SPC.

I. The provisions concerning the SPC in the Unified Patent Court Agreement (UPCA) and the Rules of Procedure: 

A.  The UPCA:

  • Article 2 (h) “Supplementary protection certificate” means a supplementary protection certificate granted under Regulation (EC) No 469/20091 or under Regulation (EC) No 1610/962“

 

  • Article 3 ” This Agreement shall apply to (b) supplementary protection certificate issued for a product protected by a patent“

 

  • Article 30  “A supplementary protection certificate shall confer the same rights as conferred by the patent and shall be subject to the same limitations and the same obligations“

 

  • Article 32 “The Court shall have exclusive competence in respect of:(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences; (b) actions for declarations of non-infringement of patents and supplementary protection certificates; (d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates; (e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates”.

 

  • Article 83 “(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.“

 

B. The Rules of Procedure:

  • Rule 2:” 1. Subject to paragraph 2, in these Rules with the exception of Rule 5 the expression “patent” and “proprietor” shall whenever appropriate include, respectively, a supplementary protection certificate as defined in Article 2(h) of the Agreement and granted in respect of the patent and the holder of such certificate. 2. References in these Rules to the language in which the patent was granted shall mean that language and not the language in which a supplementary protection certificate in respect of the patent was granted.“

 

  • Rule 5: “Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out 1. The proprietor of a European patent (including a European patent that has expired) or the applicant for a published application for a European patent (hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or application from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall lodge an Application (hereinafter in this Rule 5 an “Application to opt out”) with the Registry. (a) Where the patent or application is owned by two or more proprietors or applicants, all proprietors or applicants shall lodge the Application to opt out. Where the person lodging an Application to opt out is not recorded as the proprietor or applicant in the registers referred to in Rule 8.5(a) and (b), respectively, the person shall lodge a declaration pursuant to paragraph 3(e). (b) The Application to opt out shall be made in respect of all of the Contracting Member States for which the European patent has been granted or which have been designated in the application. 2. An Application to opt out or an Application to withdraw an opt-out pursuant to paragraph 8 (hereinafter in this Rule 5 an “Application to withdraw”) shall extend to any supplementary protection certificate based on the European patent. (a) Where any such supplementary protection certificate has been granted at the date of lodging the Application to opt out or the Application to withdraw, the holder of the supplementary protection certificate shall, if different from the proprietor of the patent, lodge the Application to opt out or the Application to withdraw together with the proprietor. (b) Where any such supplementary protection certificate is granted subsequent to lodging the Application to opt out, the opt-out shall take effect automatically on grant of said supplementary protection certificate. (c) Paragraphs 7 and 9 shall apply mutatis mutandis. For the purposes of paragraphs 7 and 9, reference to actions (i) in respect of a European patent shall apply to all supplementary protection certificates based on that European patent, and (ii) in respect of a supplementary protection certificate shall apply to the European patent on which such supplementary protection certificate is based and (iii) in respect of a supplementary protection certificate shall apply to all other supplementary protection certificates based on the same European patent. (d) For the avoidance of doubt, it is not possible to opt out supplementary protection certificates, whether granted by the authorities of a Contracting Member State or otherwise, based on a European patent with unitary effect. 3. The Application to opt out shall contain: – 22 – (a) the name of the proprietor or applicant for the European patent or application and of the holder of any supplementary protection certificate based on the European patent in question, and all relevant postal and, where applicable, electronic addresses; (b) where such proprietor, applicant or holder have appointed a representative, the name and postal address and electronic address for service of the representative; (c) details of the patent and/or application including the number; (d) details of any supplementary protection certificate granted based on the patent concerned, including the number; and (e) for the purposes of paragraph 1(a), a Declaration of proprietorship that the person lodging the Application to opt out is the proprietor or applicant pursuant to Rule 8.5 and entitled to lodge the Application to opt out. 4. Rule 8 shall not apply to Applications to opt out and to Applications to withdraw made pursuant to this Rule 5. Where a representative is appointed, such a representative may include professional representatives and legal practitioners as defined in Article 134 EPC in addition to those referred to in Article 48 of the Agreement. 5. The applicant for an opt-out shall pay the fixed fee in accordance with Part 6. The Application to opt out shall not be entered in the register until the fixed fee has been paid. One fixed fee shall be payable in respect of each European patent or application for which an Application to opt out has been filed, including any supplementary protection certificate based on said patent or application. 6. Subject to paragraph 5 the Registrar shall as soon as practicable enter the Application to opt out in the register. Subject to paragraph 7, the opt-out which meets the requirements laid down in this Rule shall be regarded as effective from the date of entry in the register. If the requirements are missing or incorrectly recorded, a correction may be lodged with the Registry. The date of entry of the correction shall be noted in the register. The opt-out shall be effective from the date of correction. 7. In the event that an action has been commenced before the Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out in the register or prior to the date of correction pursuant to paragraph 6, the Application to opt out shall be ineffective in respect of the patent and/or application in question, irrespective of whether the action is pending or has been concluded. 8. A proprietor of a patent or an application the subject of an opt-out pursuant to this Rule may lodge an Application to withdraw in respect of the patent or application, but not in respect of different Contracting Member States for which the European patent has been granted or which have been designated in the application. The Application to withdraw shall contain the particulars in accordance with paragraph 3 and shall be accompanied by the fixed fee in accordance with Part 6; paragraph 5 shall apply mutatis mutandis. Subject to the receipt of the fixed fee the Registrar shall as soon as practicable enter the Application to withdraw in the register and the withdrawal shall be regarded as effective from the date of entry in the register. Paragraphs 1(a) and 6 shall apply mutatis mutandis. 9. In the event that an action has been commenced before a court of a Contracting Member State in a matter over which the Court also has jurisdiction pursuant to Article 32 of the Agreement in respect of a patent or application contained in an Application to withdraw, prior – 23 – to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 6, the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective of whether the action is pending or has been concluded. 10. Where an application for a European patent subject to an opt-out pursuant to this Rule proceeds to grant as a European patent with unitary effect, the proprietor shall notify the Registry. The opt-out shall be deemed to have been withdrawn in respect of the Contracting Member States covered by the European patent with unitary effect at the date of the registration of the unitary effect and the Registrar shall as soon as practicable enter the withdrawal in the register in respect of such Contracting Member States. No fee shall be payable pursuant to paragraph 8. 11. A patent or application the subject of an Application to withdraw which has been entered on the register may not thereafter be the subject of a further Application to opt out. 12. The Registrar shall as soon as practicable notify the European Patent Office and the national patent office of any Contracting Member States concerned of the entries in the register pursuant to paragraphs 6 and 8. 13. Applications accepted by the Registry before the entry into force of the Agreement shall be treated as entered on the register on the date of entry into force of the Agreement. Relation with Agreement: Article 83(3) and (4) “

 

 

II. So how is it going to work?

A.  SPCs granted on top of European Patents:

As with European Patents (EP) themselves, SPCs referencing the European Patent as the basic patent will, under Article 3 of the UPC agreement, be subject to the UPC’s exclusive jurisdiction. Under article 83 UPCA, it will however be possible during the transitional period (currently 7 renewable years) to opt out of the UPC’s exclusive jurisdiction European Patents and their corresponding SPC.

 During the transitional period:

(i) SPCs granted on top of European Patents which are opted-out: 

  • If an EP has been opted out, and an SPC granted subsequently, the SPC is automatically opted out, and this opt out lasts for the whole life of the SPC. 
  • If an SPC has been granted before an application to opt out an EP is filed, the proprietor(s) of both the EP and (if different) the SPC must register the opt out.  In order for an opt out to be valid, all relevant proprietors must, in fact, participate in the opting out process.  In the 18th Draft Rules of Procedure, Rule 8.4 has been amended, and the proprietor is now defined as “the person shown in the Register for unitary patent protection as the proprietor shall be treated as such”.
  • If the EP has expired, and only the SPC remains in force at the time of the opt-out, the SPC proprietors and the expired EP proprietors will both need to register the opt-out.

Consequences of the Opt-out: if an SPC and its underlying EP are opted out, only national litigation in relation to those rights will be possible.

(ii). SPCs granted on top of European Patents which are not opted-out:

Under Article 83(1), if the European patent has not been opted-out, the patent and its corresponding SPC will be prima facie under the exclusive jurisdiction of the UPC. However actions for infringement or revocation may still be brought before national courts.

 

 After the transitional period:

(i) At the end of the transitional regime, the UPC will be the sole court to be competent in case of litigation concerning:

  • All European Patents not opted-out
  • All SPCs granted on top of European Patents not opted-out

(ii) National Jurisdictions will be competent in case of litigation concerning:

  • All European Patents opted-out
  • All SPCs granted on top of European Patents opted-out

 

B. SPCs granted on top of European Patent with unitary effect (or Unitary Patent):

European patents with unitary effect will not have the possibility to be opted-out. They will be under the exclusive jurisdiction of the UPC during and after the transitional period. This will therefore also be true for their corresponding SPCs.

However, despite being based on Unitary Patents, valid in 25 Member states, SPCs will not have the same territorial scope as Unitary Patents. Instead, the same system which exists at present for SPCs based on national or European Patents will apply, and individual national applications will have to be made.
III. Uncertainties: 

 There are quite a few grey areas concerning the interaction between the Unitary Patent, national patents and SPCs, notably:

  • For European Patents (opted-out or not), it is uncertain whether the corresponding SPCs, which are national titles, can benefit from Art. 34 UPCA, which states that the decisions of the Court shall cover the territory of those contracting Member States for which the European patent has effect, and be applied by the patentee in all 25 Member States.

The European Commission, despite declaring that the articulacy between the unitary patent and the current EU rules on SPCs is a “key challenge to get the end game right ” in its “Staff working document” on a “Single market strategy for Europe”, identifies further issues:

  • The Commission first fears that if SPC users wish to benefit from the unitary patent this “will require multiple administrative procedures in multiple jurisdictions, limiting the full benefits of a unitary system.“
  • The Commission also highlights the problem of  the”patent research exemption” and “Bolar exemption” which are applied by Member States differently. This exemption could lead with the entry into force of the Unitary Patent and UPC to forum shopping. In fact “on the one hand, some Member States do not allow the supply of active pharmaceutical ingredients (APIs) to EU-based generic manufacturers for the purpose of seeking marketing authorisation. On the other hand, in a number of Member States, it is not certain whether testing in the EU by originators and biosimilars can benefit from these exemptions for the purpose of seeking marketing authorisation in the EU and in non-EU countries, or for meeting emerging regulatory requirements such as those related to health technology assessment“.

The European Commission thus announced to be working on a project of Unitary SPC, and on the coherence between the upcoming unitary patent and current EU rules on SPC -in the absent of a unitary SPC title.

 

 

IV. Towards a Unitary SPC? 

The European Commission considers that applying the unitary patent system to SPCs would help optimising the legal framework for industry sectors whose products are subject to regulated market authorisations, and which currently “presents several features not fit for purpose in today’s global economy and in the light of new regulatory requirements“.  The European Commission therefore calls for a Unitary SPC to  “enhance the value, transparency and legal certainty of the protection of medicines and plant protection products; and provide a one stop shop for the granting of SPCs in Europe, and give enhanced certainty to European health authorities, to patients and to generic companies on the status of a regulated product’s IP protection.”

The European Commission’s project is supported notably by the European Crop Protection Association (ECPA), European Federation of Pharmaceutical Industries and Associations (EFPIA) and the International Federation of Animal Health (IFAH). These three organisations published in 2015 a letter in support of a Unitary SPC being granted on the basis of European Patent with unitary effect which they see as “a logical continuation of the Member States’ decision and agreement to create a European Patent with unitary effect“. In this letter the ECPA, EFPIA and the IFAH point out that it will be necessary to designate a body responsible for granting the Unitary SPC for the 25 Member States participating to the enhanced cooperation mechanism.

The Unitary SPC might however be a project for which a political compromise is quickly reached, following the positive valuation for the UPC of a gain of 0.25 % GDP in EU -“which represents the possible net productivity impact resulting from the reduction of validation and maintenance fees in the Member States for patents granted by the European Patent Office”- and a reduction of up to 80% in the cost in administrative costs.

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Could there be a Unitary Supplementary Protection Certificate?

Supplementary Protection Certificate

A Unitary Supplementary Protection Certificate to complement the Unitary Patent?

A few countries have recently geared up for the ratification of the UPC Agreement. Although the date of its entry into force is yet unknown it is hoped that the Unified Patent Court will start its operation before the UK leaves the EU. This means that the Unitary Patent may also become available before March 2019. Indeed, EU Regulations No 1257/2012 and No 1260/2012 entered into force on 20 January 2013 will apply from the date of entry into force of the UPC Agreement. However, the issue of the Unitary Supplementary Protection Certificate still has to be resolved.

In 2015, the EU Commission announced that as part of the Single Market Strategy,  an initiative of the European Commission’s plan to unlock the full potential of the Single Market,  the Commission would ‘consult, consider and propose further measures, as appropriate, to improve the patent system in Europe, notably for pharmaceutical and other industries whose products are subject to regulated market authorisations’. The Strategy thus aimed at exploring a recalibration of certain aspects of patent and supplementary protection certificate protection. According to the EU Commission, this could comprise the following three elements: (1) the creation of a European Supplementary Protection Certificate title, (2) an update of the scope of EU patent research exemptions, and (3) the introduction of an SPC manufacturing waiver.

The promised consultation process finally took place between 12 October 2017 to 4 January 2018 and a total of 231 replies were provided. Its outcomes are summarised in the “Summary of the replies to the public consultation on Supplementary Protection Certificates and patent research exemption for sectors whose products are subject to regulated market authorisations”

It transpires from it that a “very large majority of the respondents across all categories favour the creation of a unitary Supplementary Protection Certificate”, extending unitary patents when such patent rights expire.

Regarding the benefits of a unitary Supplementary Protection Certificate the participants declared the following:

“ (I)t could boost the value of investments, that it would reduce red tape relating to registration and to litigation, that it would provide uniform protection across the Union as well as legal certainty, that it would reduce maintenance costs, that it would offer a specialised court, and that it would make licensing easier. A large majority of generics/biosimilars (‘G/B’) manufacturers, including SMEs, share these views.

One Member State considered that it would also simplify and enhance the efficiency of the SPC application process.

Opinions diverge regarding the practicalities for implementing such a new title. While some respondents favour the grant of that title by a virtual office composed of national experts working on behalf of an EU agency, others prefer either to entrust the EPO with this task, or to set up a new EU agency to do so.

Amongst SMEs manufacturing G/Bs, half of them favour the grant of unitary SPCs by a new EU agency, while the other half favour the EPO for this purpose.”

Concerning the languages to be used for a unitary Supplementary Protection Certificate:

“(A) clear majority favoured the EPO language regime (English, French, German), which is the regime that is applicable to the EU unitary patent. However, SMEs manufacturing generics and biosimilars prefer the five language regime of the EUIPO (English, French, German, Italian and Spanish), whilst one of these favours the EPO regime.

Respondents also mostly considered that national marketing authorisations should be able to be used (in addition to EU marketing authorisations) as a basis for getting a unitary SPC, even though the latter would then not be enforceable in those Member States where no marketing authorisation would have been granted (through mutual recognition or decentralisation procedure).“

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What should you know about the Unitary Patent?

What should you know about the Unitary Patent?

 

The Unitary Patent should soon add a new level of protection for patent owners in Europe. This post therefore presents the essential characteristics of the Unitary Patent, and how it differs from the current patenting system. 

 

What is the current patenting system in Europe?

In Europe, it is currently possible to apply for a patent through the national,  international, and European routes.

Under the national route, applicants can apply for a patent in one country at a time. The applicant must file the application at the IP offices in the countries where she seeks protection. The national route leads to national rights and confers protection at national level.

Under the international route, the Patent Cooperation Treaty (PCT) provides a unified procedure for 152 different contracting states. A PCT application allows patent holders to simultaneously seek patent protection in a large number of countries by filing a single “international” patent application. It is not necessary to file several separate national or regional patent applications. The granting of patents remains however under the control of the national or regional patent offices.

Under the European route, applicants are granted European patents for some or all of the contracting states to the European Patent Convention (EPC) and to the current extension states (Bosnia and Herzegovina, Montenegro). A European patent is a bundle of national patents. It has the effect of and is subjected to the same conditions as a national patent granted by that state. This is true for each of the contracting states for which it is granted.

What is a Unitary Patent?

A European patent with unitary effect or Unitary Patent is a new type of European patent, to which unitary effect is given. The Unitary Patent is not a new intellectual property title but a new legal characteristic given to an already existing title: the European patent.

The Unitary Patent will be granted by the EPO under the rules and procedures of the EPC. It will co-exist with the current patent system. Patent proprietors will be able to choose between European patents, national patents and Unitary Patents.

It will not be possible to obtain a European patent and a Unitary patent for the same invention.

Which legal instruments created the Unitary Patent?

In March 2011, the Council of the European Union issued a decision authorising enhanced cooperation for the creation of a unitary patent protection.

Enhanced co-operation is a mechanism set out in the Lisbon Treaty. It allows 9 or more EU member states to establish advanced integration or cooperation in any area within the EU structures, without the other member states being involved.

The Unitary Patent package consists of:

  • Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.
  • Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.
  • The Agreement on a Unified Patent Court (UPC Agreement), an agreement between EU countries to set up a single and specialized patent jurisdiction. This Agreement must still be ratified by most  Member States. The UPC Agreement will enter into force on the first day of the 4th month after the deposit of the 13th instrument of ratification, including the ratification of Germany, France and the United Kingdom. These 3 countries were indeed the 3 Contracting Member States in which the highest number of European patents had effect in 2012. Currently 15 Member States including France have ratified the UPC Agreement.

What are the goals of the Unitary Patent?

The Unitary Patent aims at:

Reducing the current cost of patenting. Patenting an invention in Europe can be costly, as once granted, a European patent can only be enforced at national level. This may also entail translating it into the official language of the country concerned and paying validation and annual renewal fees in multiple states. The Unitary Patent on the contrary will offer simpler and cheaper translation requirements. It will also be subject to a single set of renewal fees. This will allow for a reduced patenting cost.

Improving legal certainty and reducing litigation costs. Patents on inventions with a high market value are frequently the subject of litigation. Due to the lack of a unified litigation system, this leads to parallel lawsuits in different countries and divergent outcomes. The Unitary Patent will be under the exclusive competence of the Unified Patent Court. It will thus depend only on a single set of rules. This should guarantee a unified application of the law and prevent any parallel and discordant law suit. Finally, the decisions of the UPC, will have authority in all participating Member States.

When will it be possible to apply for a Unitary Patent?

Patent holder will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. It will however not be possible to request unitary effect for patents granted before that date.

In which countries will the Unitary Patent be available?

The Unitary Patent will be available in the participating Member States that have signed and ratified the UPC Agreement.

26 countries (all EU Member States besides Spain and Croatia) have adopted the European Regulations. 25 countries (all EU member states except Spain, Croatia and Poland) signed the UPC Agreement. However, only 15 Member States have so far ratified the UPC Agreement.

The Unitary Patent will be available for the territories of the Member States that have ratified the UPC Agreement. Hence although the Unitary Patent may one day be available for 26 countries, it will start off with less countries.   The Unitary Patent will however cover the territory of at least 17 countries (ie the 15 member states that have already ratified the UPC Agreement + UK and Germany). The extension of the Unitary Patent’s territorial coverage will thus be progressive as the rest of the Member States will ratify the agreement over time.

Renewal fees:

To maintain a Unitary Patent, the patent holder will have to pay an annual renewal fee directly to the EPO.

The Select Committee endorsed in December 2015 the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The True Top 4 corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries. These are: Germany, France, UK and the Netherlands. The True Top 4 gives also special consideration to the situation of the SMEs.

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

For more informations on the Unitary Patent check the Unitary Patent section of the blog.

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What future for the UPC now that the UK has voted to leave the EU?

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

On Wednesday (06/07/16) the Union pour la Juridiction Unifiée des Brevets (Union for the Unified Patent Jurisdiction) organised in Paris a conference on the consequences of the Brexit for the UPC. (See the recorded video below)  The participants,  Thierry Sueur, chairman of the IP Committee of the MEDEF -the French business federation- representing the European industry, Professor Winfried Tilmann from Hogan Lovells, Rowan Freeland from Simmons&Simmons, and Alexander Ramsay, chairman of the UPC Preparatory Committee, outlined  the legal and political consequences of the Brexit on the UPC and the immediate next steps for the Preparatory and Advisory Committee in this regard.

After an opening by Pierre Véron who reflected on the shock of the Brexit news (shared by the audience), Thierry Sueur highlighted the position of the European Industry which is demanding that the ratification process continues in order for the UPC to come live, and he thus pleaded for the UK to ratify the UPCA and its protocol. According to him, ratification by the UK would in fact allow the UPC to meet its opening deadline in Spring 2017 and would leave the door open for the UK to take part in the UPC and the Unitary Patent package.

Professor Winfried Tilmann then addressed the question of whether the UK can still take part in the UPC. First Professor Tilmann argued that there were strong political arguments to justify the UK’s ratification. In fact, the UK is still and until the end of the two-year period after its notification of withdrawal under article 50 of the Lisbon Treaty, a member of the EU and, as both houses of British parliament have already started working on ratifying the UPCA, the ratification could therefore be quite straightforward.  He also noted that the UPCA is an international treaty that does not derive from EU law, and that although the UPC shall be a court common to the Contracting Member States -and thus subject to the same obligations under Union law as any national court of the Contracting Member States- it is not a court of the EU -contrary to the ECJ. This would thus mean that the UK local and central divisions could remain in London, and that UK practitioners and judges could take part in the UPC.

Regarding the legal factors involved in considering whether the UK could leave the EU but still be a contracting member state under the UPCA, article 84 of the UPCA appears to be an obstacle. In fact it provides that only EU member states may ratify the UPCA. According to Professor Tilmann, this condition implies, that countries which ratify the UPCA remain EU member states. Therefore if the UK leaves the EU pursuant to article 62, 65, and 67 of the Vienna Convention on the Law of Treaties, both the UK and the other signatories of the UPCA, would have the right to cancel the contractual relationship between the UK and themselves.  Article 84 would thus need to be amended to allow the UK to be a signatory to the UPCA even after leaving the EU. Such a change is possible for Contracting Member States on the basis of article 149a(1)(a) of the European Patent Convention and would not require them to re-ratify an amended UPCA. The amendments to the UPCA could in fact be included in the Brexit agreement which would in turn  have the quality of Union law and “pursuant to article 87(2) UPCA, the Administrative Committee has the power to change the UPCA in order to bring it in line with Union law”.

However it is important to note that, were the UK to leave the EU after ratifying the amended UPCA,  it would be bound by the ECJ’s decisions and by its interpretation of EU law as the UPC has the obligation to refer questions on EU law to the ECJ. The UK would also be jointly and severally liable for damages with other contracting member states as provided by the UPCA. Finally, during the transitional period, national UK courts would also be bound by the UPCA within the same remit as stated above.

The legal consequences of the UK leaving the EU would nonetheless be wider than those faced for the UK’s participation to the UPC. In fact the unitary effect would also need to be extended to the UK by agreement under article 142 (1) EPC. This would result into a Unitary patent deriving its effects from EU law when applying within the territory of the EU, and a Unitary patent deriving its effects from international law when applying to the UK.

Rowan Freeland then explored what would happen were the Contracting Member States to “exclude the UK of the UPCA” before it leaving the EU, in order to pursue the implementation of the UPC and Unitary Patent. According to him, re-negotiations of the UPCA to exclude the UK would be possible, but would require a new ratification of the newly amended UPCA. This would in turn require Denmark to organise a new referendum for the ratification of the new UPCA. Rowan Freeland however highlighted that 50% of all European Patents are validated in the UK, France and Germany. Therefore if the UK were not to take part in the UPC and the Unitary patent, a smaller number of users than expected might potentially be interested in the UPC and the Unitary patent. This reasoning would extend to the unitary patent “top 4” renewal fees which is based on the cost of renewal in the four EU countries that have registered the most patents. Indeed, if the Unitary patent effect is not extended to the UK, and if the latter is not part of the UPC the savings achieved by opting for the Unitary patent would decrease.

Finally, despite the general uncertainty, Alexander Ramsay tried to be reassuring and explained that for the moment the Preparatory Committee was working as normal and that the recruitment process was still ongoing. As the chairman of the Preparatory Committee, he emphasized that member states are encouraged to actively pursue their efforts for ratification in order not to delay the coming live of the court, whenever that may be. Alexander Ramsay explained that no contingency plan had yet been drafted as the political situation is very unclear. The Preparatory Committee will therefore need to have more elements of information on the position of the UK and on how the other contracting member states wish to proceed, before devising new options for the UPC and Unitary patent. Alexander Ramsay however was positive and seemed to believe that the project of the UPC and Unitary patent will survive Brexit and come live anyway.

Although the atmosphere cannot be described as joyful, the participants (including the UPC Blog) expressed their hopes to see the UPC and the Unitary Patent becoming a reality in the near future and for EU countries to seize this opportunity to bring the union closer through IP.

Below the recorded video of the conference available on YouTube:

https://www.youtube.com/watch?v=p5clCZXqgxk

The documents (presentation slides) of the conference can be found here.

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A new tender for the recalibration of SPCs

Last week, the EU Commission published a new call for tender for a legal study on the EU system of Supplementary Protection Certificates (SPCs), after the previous tender attracted a very limited number of bids.

This study will be used by the Commission for an overall evaluation of the SPC system in the EU and will inform the decision on whether to come forward with a new SPC title at European level or revise the existing SPC legislation.

A number of issues have in fact been raised regarding SPCs and their compatibility with the unitary patent and the unified patent court (see below for our existing posts on this issue). The pharmaceutical industry has for example highlighted the fact that while the unitary patent will be delivered for all the contracting member states by the EPO, SPCs will be granted in each Member State in which the basic patent was granted and the MA obtained, after filing at the national industrial property office. The SPC and its corresponding unitary patent will thus not have the same territorial scope. Similarly, the opt-out might be logistically complicated as all the proprietors of both the EP and  the SPC must register the opt-out for it to be valid.

The contracted study shall thus evaluate the legal efficiency of the current SPC framework “in meeting its stated objectives given the development of directly affected and related product markets” and whether a new European SPC title is required to meet the requirements of current and expected innovative market developments in the EU.

The results of this study are expected at the beginning of 2017.

If you are interested in this call, you can find here the complete tender documents.

You can find here our post detailing the changes that the unitary patent will bring with regard to SCPs, and our introduction to the topic here.

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The Unitary Patent identified as the single most important IP issue this year

Last week, Taylor Wessing published its fifth Global Intellectual Property Index which assesses how intellectual property regimes around the world compare with each other. The Index also identifies the  IP hot topics among its 8,500 individual assessments from senior industry figures, and this year the Unitary patent was identified as the single most important IP issue!

Just two days before the Brexit referendum we can only hope that this enthusiasm carries weight in the UK’s decision to stay or leave the EU…

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Want to test the online procedure for registering unitary effect?

The EPO has created for the existing users of its Online Filing software a plug-in, which simulates the drafting, signing and sending of a request for unitary effect and filing of subsequent documents in a demonstration mode.

Users are invited to send their feedback on the demo to uppolffeedback@epo.org until 31 July 2016.

The EPO however makes clear that “the demo is purely for test purposes only and that completion of the registration procedure has no effect”, the final and operational version of the software will in fact be available before the unitary patent system enters into force.

For a full-on experience, it is still possible to test the UPC Case Management System  here.

 

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Are you a Unified Patent Court neophyte? Here are a few videos for a quick catch up:

The European Patent Office (EPO) announced shortly before Christmas that the Unitary Patent (UP) was legally and technically ready while the date for the entry into force of the Unified Patent Court was officially set for early February 2017. 

The Court and Patent fee structures have been finalised, the creation of the IT system administering the electronic filing is soon to be completed, the Rules of Procedure have been through 18 drafts, and the UPCA Agreement has already been ratified by 9 countries, to name but a few steps towards the entry into force of the UPC.

The Unified Patent Court (UPC) and the Unitary Patent are thus nearly ready and time is running low before we all need to be UPC-fluent!

Indeed, some of us are already working on mastering the rules of procedure, case management system, and UPCA, while others are designing their new IP strategy in light of the coming harmonisation of patents in the European Union. In this UPC frenzy however it is difficult for UPC neophytes to know where to start…The UPC Blog would therefore like to dedicate them this page.

Here UPC novices will find short videos introducing the UP and UPC. Our posts can then easily be accessed through the main categories at the top of the page or through tags (for specific topics) for in-depth analysis and “fresh” news. You can also use the “reply” section (at the bottom of most posts) for your questions or comments. 

ABC of the UPC:

  • The European Patent Organisation has published a short video in which Benoit Batistelli, its president,  “reflects on the advantages of the Unitary patent” and explains the main characteristics of the Unitary Patent and the changes that will appear with the Unified Patent Court.

This video does not address issues related to the UP and UPC in-depth, but is a good tool for those who want to  understand quickly the impact the Unitary Patent and Unified Patent will have on the present patent environment.

  • Three videos from the 2014 European Patent Forum published on youtube by Managing IP will also give  a better understanding of the stakes behind the UP and UPC to newbies:

In the first one, Luke McDonagh, an academic from City University London analyses the issues he uncovered in his report produced for the UK Intellectual Property Office on attitudes towards the UP.

The second and the third videos, are example of what companies expect from the UP and UPC.

Watch this space: More videos from the UPC Blog will soon complete this sample…

 

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To align or not to align? The example of the UK Patent (European Patent with Unitary effect and Unified Patent Court) Order 2016:

Brexit and the German constitutional challenge

The ratification process of the UPCA and the entry into force of the UPC have to a certain extent eclipsed the issue of alignment of national laws on the UPCA. Some countries, such as the Netherlands, have already declared that they will fully align by adopting the UPCA as their new national patent law. Others who have already ratified the UPCA, such as Denmark do not plan to change their national law at all.

Arguably, alignment of all national laws on the UPCA would allow for a more efficient use of the system by guaranteeing fairness and predictability. Alignment would in fact stop any “system shopping” whereby users could choose to opt-out from the UPC in order to benefit from the differences in the scope of protection under national patent law. On the other hand it can be argued that aligning all national legislations on the UPCA would go considerably beyond the initial project of the Unified Patent Court and the Unitary Patent. The debate as to the necessity or suitability of alignment will therefore remain open for the next few years until the effects of non alignment become obvious.

The position of the United Kingdom reversely, reflects a middle ground position, with a partial adoption of the UPCA within national legislation.  The publication last week of the fourth report of the Secondary Legislation Scrutiny Committee along with “The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016”  and an address to the House of Lords detailing the position of the Committee on two specific points, gives us a clear idea of the way the UK intends to partially align its national legislation with the UPCA. In January 2016, the Government had already published its response to the public consultation on the secondary legislation implementing the Unitary patent and the UPCA, which indicated that the UK Government strongly supported alignment with the UPCA.

The Explanatory Memorandum prepared by the Intellectual Property Office and the Department for Business, Innovation and Skills clearly explains the extent of the alignment now considered:

“Before the UK can ratify, the Government needs to ensure that its obligations under the UPC Agreement are met in national law. It is also necessary to ensure national law is in compliance with the provisions of the Unitary Patent and Translation Regulations. In particular, this means that the new Unitary Patent should be reflected in the Patents Act as a patent valid in the UK, and that the Unified Patent Court must be given the proper degree of jurisdiction over the appropriate patents. These goals can only be achieved through legislation.”

The IPO however considers that the rights given to owners of Unitary Patents and European Patents to prevent the use of their invention and the exceptions to those rights “are the same as currently provided under UK law, so require only minimal changes to be made“, except in two areas that were highlighted by the government in its public consultation that took place in 2015 and were the object of  given specific attention by the Secondary Legislation Committee and Department of Business Innovation and Skills:

  • The first exception relates to the ability of plant breeders to use patented biological material to create a new plant variety without infringing a patent for that material.  This exception already exists in the patent law of Germany, France and the Netherlands, which are the major countries for plant breeding in Europe. The Department for BIS therefore notes that “the industry in which this exception will operate is therefore familiar with how it works, and the effect it will have on their research and development. Indeed, the industry has urged its introduction and emphasised its importance in allowing UK companies to remain competitive in the field“. The introduction of this change therefore intends to put the UK industry on a level footing with major competitors in other parts of Europe, and will apply to all patents valid in the UK.

 

  • The second exception allows someone to use a lawfully-acquired computer program for certain purposes without the permission of the patent owner, and without that use being an infringement of any patent covering that program. This is a narrow exception, intended to assist in the development of independently created programs so they can work correctly with other programs, and which will not be applied to GB national patents, but only to European Patents (UK) and Unitary Patents. This software exception does not currently exist in the patent law of any of the participating Member States, the Department for Business Innovation and Skills therefore considers that “as such, its scope and effect have not been tested in litigation, so the extent of use it may permit is not known. In addition, the exception is unusual because it uses an EU Directive on copyright to define its effect, and it is not clear how that will interact with patent law“. The IT and telecoms sectors having expressed strong concerns and with great uncertainty as to how many patents could be affected,  a cautious approach is recommended for this exception.

It is now to the UK Parliament to vote the Patent (European Patent with Unitary Effect and Unified Patent Court) Order 2016 which will ensure the partial alignment of the UK patent legislation on the provisions set in the UPCA, before it ratifies the latter. The UK’s partial alignment is not of course a position common to all contracting member states but it illustrates the careful balance that contracting member states will need to achieve in order for national laws and the UPCA to create a coherent and fruitful environment for patents.