Unitary Patent System
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Transcript of Unitary Patent System
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Through three main channels Patent application filed directly with each country
(national filings) International Patent application under PCT Regional patent through EPO (European Patent)
How to file PCT and EPO applications? Unification- Current European Patent is not unified
Wide variety of national laws and regulation apply Two proposals to advance EP system within EU
Fragmented European patent system has negative impact on Innovation, growth and the competitiveness of European
business
They have to at par with USPTO and JPO Over 40yrs EU members- several conferences and
international agreements Aimed at creating Unitary Patent System valid throughout
European countries EP Organization outcome of EPC was significant milestone
Cost and Uncertainty Regarding European Patents High cost in all 27 EU members and 38 EPC countries
Classical EP- Renewal fees to national offices is 15 times higher than USPTO
US & Japan- single patent application
Unlike US &Japan- after grant of EP inventor must validate the patent in EU States
Process of validating- costly & difficult For eg- total cost of validating EP in France, Germany & UK-
680 Euros In 13 countries- 12,500 Euros & in all 27 countries- 32,000
Euros Infringement and revocation proceeding at national
courts Different interpretations of EP law
Several issues on Judicial Enforceability National patent litigation makes multiple jurisdiction Increases litigation cost SMEs is prone to this litigation cost and risky multi-forum
litigation
Absence of a central patent court EP is litigated individually in each country where patent is
in force Parallel litigation of same patent in different national
courts
Which all affects the efficiency of the EPO
Due to above stated issues, there is strong desire for Unitary Patent System throughout Europe
History: The Paris Convention, 1884
1st international treaty address IPR across international borders
Modern-day multinational protection for IP First attempt to harmonize patent law throughout Europe
Rights of N.T
Right to priority
Shortcoming- member states did not make any significant concessions regarding harmonizing substantive patent law
1) The European Coal and Steel Community ) The European Coal and Steel Community Treaty- 1952:Treaty- 1952:
After WW II- necessity to reconstruct EU economy Aim- “contribute, through the common market for coal
and steel, the economic expansion, growth of employment and a rising standard of living”
Ensuring free movement of products & prohibit restrictive trade practices
Evidences- early awareness by EU leaders that peace, economic expansion, employment, IP protection and free flow of goods
2) The European Economic Community Treaty – 2) The European Economic Community Treaty – 1958:1958:
Harmonious development of economic activities
Continuous and balanced expansion
Increase in stability , and accelerated raising of the std of living
Due to success of EEC, European countries decided to harmonize their economic activities throughout the Europe
The EU was established by this treaty, signed on 7th Feb 1992
Developed, Single currency Established freedom of movement of goods,
services, people and money b/w member states Promotion of scientific and technology advances
UPS has ensured all the objectives later
After establishment of EEC, the council initiated 1st major attempt to harmonize substantive patent law throughout EU
In 1963, 13 member countries negotiated the Convention on the Unification of Certain Points of Substantive Law on Patents for Invention
Objectives: To harmonize substantive patent laws- Creation of international patent Assist industry and inventors Promote technical progress
1st significant effort by European countries to harmonize patent law
Opened for signature on 27th Nov 1963 and did not EIF until 1st Aug 1980- ratified by only 8 countries and 13 countries parties to it
Strasbourg Treaty is the - Blueprint for EPC in 1973
EPC is another notable effort to created European patent system
Currently 38 European countries are parties to it Include all 27 EU members and 11 countries not in EU
Lead to creation of EP Organization Authority to grant European patents Introduced standard rules governing European Patents
Inventor files single patent application with EPO
Inventor can validate the patent in each contracting state separately
EPC established uniform requirements for filing, prosecution, opposition and appeal of EPO decisions
Foundation for eventual unification of substantive patent law throughout Europe
Shortcoming- EPO did not replace national patent offices
EPC member states not obligated to amend their national patent laws to conform to EPC patent provisions
EPC members retained authority over European patents after validation Determine patent validity, post grant infringement, damages,
enforceability
Further attempts of unification of EU patent system struggled to build upon the success of this unifying treaty
9 countries signed this CPC but it never CIF
Main goal: To created unitary and autonomous European patent Single unitary and autonomous protection right
It is developed in conjunction with EPC and EEC
If enacted- patents issued by EPO automatically effect throughout entire European
Prepared uniform rules governing unitary and autonomous effect of EP
Similar to EPC, this CPC also not require member states to change their national patent laws
Luxembourg Conference (1985), EEC, EC and other international organization were eager to conclude the CPC
To this end, CPS was signed by all EEC members
Due to ‘constitutional and political problems in some member States’ only 7 countries ratified CPC But never CIF
Main obstacle for the ratification is Translation provisions
CPC is an another bold leap forward for creating UPS But suffered the same fate
Another initiative impact patent applications throughout the globe
Began in the late 1960s
Signed in Washington, DC on 19th June 1970 by 20 countries initially
EIF on 24th Jan 1978 and all EEC members are party to the PCT
Total 146 (June 2012) As on now……
PCT allows inventor to file a single international patent application
Member states to accept PCT applications as national applications
PCT doest not interfere with granting or post granting validity of patents, infringement and enforceability
PCT is an imp milestone in international patent co-operation
But, it had only little impact on advancement of community patent in Europe
Because, EU had already established a regional patent process to file single patent application with the EPO
Protocol on the Statute 14yrs after CPC, EC met once again in Luxembourg
regarding community patent
This agreement amended CPC by incorporating new system of litigation concerning the validity, effects and infringement of Community patents
Supplement with three protocols Protocol on settlement of Litigation
Create CP courts of 1st and 2nd instance Also to establish Common Appeal Court with an independent legal
personality Protocol on Privileges and Immunities
This agreement also never come into force, because 2 main reasons, The excessive cost to applicants – for translation
to official language of every EEC country Complex judicial system, which would declare CP
invalid and that decision would effect throughout the EC
Influenced the harmonization of European substantive patent law
Member States to ‘implement in their law more extensive protection’
Term of patent- 20yrs
No discrimination based on place of invention and field of technology
All EU members are parties to the TRIPS Obligated to ensure their patent laws are in compliance
Shortcoming- only minimum protection and no uniform system of protection
EPLA- proposed by EP Organization sub-group of the working party on litigation
It is an optional protocol to EPC
Aim- ‘remedy the shortcomings of the present purely national litigation system of EP’
EPLA would establish a ‘European Patent Court’ Deal with infringement and revocation action issued by EPO
European Patent Court: CFI A central division Number of Regional Divisions Court of Appeal
European Union’s Lisbon Strategy- 2000:European Union’s Lisbon Strategy- 2000: Lack of CP was subject to EC’s meeting in March 2000,
Lisbon
EC called for creation of Community-wide patent protection by end of 2001
Based on the decision- European commission proposed an EU regulation for a Community patent in August 2000 Now EU Unitary Patent Regulation (UPR)
The proposed EU- UPR is founded on the CPC and 1989 Agreement
In 2003 several revisions to arrive at a compromise
But EU working group failed to reach on agreement on translation claims
Negotiation regarding the proposed regulation stalled and a final agreement was never reached
On 3rd April 2007 European Commission adopted Communication Enhancing the Patent System in Europe Vision to make EU Unitary patent a reality To improve European patent litigation system
Purpose is to reinvigorate Patent reform debate and suggest new avenues for UPS UPC
The convention of the Grant of European Patents (London Agreement) was an initiative of an EPO This was concluded on 17th Oct 2000 but did not EIF till
May 1, 2008
Out of 27 EU members States, Only 12 EU members are parties to it 13 others are agreed either dispense entirely with
translation provision Italy and Spain are not parties to it
Both opposed because they want to file patent applications in their national language
Three Proposals Two regulations
(Unitary Patent Protection) and one Agreement (Unitary Patent Court) 1st : EU enhanced
cooperation procedures- to pass EU Regulation on Unitary Patent Protection
2nd : Unified Patent Court (Draft) Agreement
The Regulations entered into force on 20 January 2013, and are applicable from 1 January 2014, or
The date of EIF of the UPC Agreement whichever is the later
It will enter into force on 1 January 2014 or after the deposit of the 13th instrument of
ratification or accession
On 4th Dec 2009, Council of EU adopted this proposed regulation
Patent protection in all EU countries by submitting single patent application to the EPO
The procedure of examining, criteria and others rules are same as in EPC
The difference is post-grant phase
Problems associated with translation regime
After long discussion and considering various options European Commission adopted proposal for translation regime
Which chose English, French and German as an official languages of EPO If submitted in any other languages- Application will be translated into one of
the official languages
Majority of EU members supported this proposal but Italy and Spain objected it
To overcome this stalemate- EC at request of 12 member states use of EU enhanced cooperation legislative procedure Which allows for approval of EU legislation without consent
of all 27 members Laterly other 13 additional EU members also joined
On 10th March 2011, council adopted a decision to create UPP
Italy and Spain filed complain with CJEU challenging the use of enhanced cooperation procedure Seeking to annul the decision of EU council
If the proposal becomes law, than cost of obtain EU-Wide patent will decrease from around 32,000 Euros to less than 2,500 Euros During transition period- 680 Euros
EU Patent Package has not yet come into force
Expected to be ratified by all the contracting member states sometime in 2015 or 2016
There will be significant changes to European Patent System if it does come into force
Unitary patent is a "European patent with unitary effect“
The unitary patent has unitary character with unitary effect for the territory of the 25 participating states
Post-grant registration of unitary effect on request of the patentee
Single EPC procedure for European and "unitary patents"
Application and examination procedure will remain unchanged
Will be limited, transferred or revoked in all participating member states
EPO is solely responsible for granting UP Licensing, collection of renewal fees, disbursement of fees
Application and examination procedure for Unitary Patents are same as for European patents (until Grant of patent)
The main diff b/w UP and EP will be in the Post-Grant phase.
Registering a unitary patent:Registering a unitary patent:
File a unitary patent application- applicant will need to file for EP with EPO and register for unitary effect during post-grant phase of prosecution
Basic requirements Patent proprietor has to file the request for unitary
patent protection with the EPO in writing in the language of proceedings (English, French or German) no later than one month after the mention of the grant is
published
Unitary effect can only be requested for European patents which were granted with the same set of claims in respect of all the participating states
Translations only have to be filed during a transitional period (Upto 12 years)
Effects of the registration Unitary patent does not revoke or replace
European Patents or national patents within the member states
Current member states - 25
Italy (IT) and Spain (ES) intend not to participate in the Unitary Patent protection (however Italy has signed the Unified Court Agreement)
EPO members outside EU are not within this agreement Switzerland, Turkey, Norway and Iceland
One-stop-shop: centralized post-grant administration by EPO requests for unitary effect Register for unitary patent protection receiving/registering statements on licenses of
rights collection/distribution single renewal fees reception/publication of translations during
transitional period administration of compensation scheme for
translation costs
Builds on EPO language regime (Art 14(6) EPC) Reliance on EPO machine translations
Transitional provisions
Compensation scheme for the filing of applications in one of the official EU languages that is not an EPO official language Reimbursement: EU based SMEs, natural persons,
non-profit organizations, Universities, public research organizations In any official language other than those three- cost
reimbursed
UP will automatically be valid for all participating EU states.
Single Patent application and avoid multiple litigation
Less cost effective Encourage SMEs, NPOs, Universities
Easy maintenance of a Unitary patent by paying all annuities to EPO. Reduction of the renewal fees
According to the European Commission, a Unitary Patent may cost just € 4,725 Euro compared to an average of € 36,000 needed today
No further translations will be required beyond those required by the EPO before grant.
Transitional provisions, however, will apply until high quality machine translations are available
Difficult to predict the impact
The integration with other means of patenting UPS will not change the current manner of filing and also PCT
application
The cost of obtaining a unitary patent Welcome change-
The effect of national laws on the enforcement of UP protection Art 69 of EPC interpreted according to national precedent Change in the structure of court system- CFI, CoA Greatest contrast b/w claim interpretation standards in
Europe is demonstrated by diff b/w English and German approaches English courts construe – Peripheral claiming (plain meaning) German courts- central claiming (narrow scope of protection)
Issues of prior user rights, and compulsory licenses are remain fragmented
The possibility of forum shopping Multinational patent litigation Arbitration proceedings
International effect of licensing Under EP system- licensing is difficult By filing UP application owner may escape ongoing
maintenance fee
US applicants will have an effect on future filings and proceedings
Predicted Effect:Predicted Effect: US applicants will have another tool for protect
their IP in EU
UPS nail for peripheral claim interpretation US practitioners need to become more familiar with
this interpretation
Broader protection may lead to more litigation threats
EPO Patent filing statistics in 2013 By EPO members States– 35% USA- 24.5% Japan- 19.7%
Data of EPO Biotechnology patents from non EU countries are stronger
Classical EP- EC Directive 98/44/EC Legal protection of biotechnological inventions
Two aspects- bifurcation and injunction create abuse of the UPS Patent infringement and validity are heard separately
Injunction – patent assertion entities (PAEs) patent trolls Negotiating power to force excessive settlements from
other companies
Proposed UPC do not provide sufficient guidelines on such issues PAE cases are already growing battlefield in USA and EU
Impact of PAE on BT industry is on functional claims
Forum shopping may influence such type of litigation
Overall, UPS will likely have a positive impact on applicants
Negative aspect also logically follow
European businesses are at disadvantage in global market because of fragmented patent system
The possibility of UPS and UPC raises many important questions. Will the unitary patent be uniformly enforced? Will the Europeans give full faith and credit to their
neighbors? Will the new regime decrease costs?
We will have to wait for the better times!We will have to wait for the better times!