1 Today's European patent system The Union's patent package Legal - - PDF document

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1 Today's European patent system The Union's patent package Legal - - PDF document

Jun 30, 2023 342 likes •424 views

US Bar EPO Liaison Council 29th Annual Meeting Munich, 18 October 2013 2. Unitary patent protection and Unified Patent Court State of play October 2013 D522 International Legal Affairs European Patent Office, Munich Today's European

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US Bar ‐ EPO Liaison Council 29th Annual Meeting

Munich, 18 October 2013

  • 2. Unitary patent protection and

Unified Patent Court State of play ‐ October 2013 ‐

D522 International Legal Affairs European Patent Office, Munich

International Legal Affairs 2

Today's European patent system

  • Unitary patent protection

> EU Regulation No. 1257/2012 of 17.12.2012 > Introduction of a European patent with unitary effect > EU Regulation No. 1260/2012 of 17.12.2012 > Translation arrangements for the European patent with unitary effect > Entry into force on 20.1.2013 > Applicable

  • as of the date of the entry into force of the Agreement on a

Unified Patent Court

The Union's patent package – Legal instruments

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International Legal Affairs 3

Today's European patent system

  • Unified Patent Court

> Agreement on a Unified Patent Court of 19.2.2013 > a court common to the Member States of the EU > specialised in patent litigation > Signed by 25 EU Member States – Entry into force 4 months after the deposit of the 13th instrument of ratification or accession

  • including DE, FR and UK

– Target date set by Signatory States : "early 2015"

The Union's patent package – Legal instruments

International Legal Affairs 4

European patent application Filing and formalities examination Search report with preliminary

  • pinion on

patentability Grant of European patent Refusal or withdrawal

  • f

application Substantive examination

The unitary patent as a European patent

European patent with unitary effect in the territories

  • f the 25 participating

Member States On request

  • f the

patent proprietor Limitation Revocation Opposition proceedings Appeal proceedings

Same grant procedure as for a classical European patent

The European patent is deemed not to have taken effect as a national patent in the 25 participating MS

Unitary patent protection - Concept

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International Legal Affairs 5

Unitary patent protection – New tasks for the EPO (I)

The participating Member States will entrust tasks to the EPO

  • 1. Receiving and examining requests for unitary effect
  • 2. Registering unitary effect

– or, where the conditions for obtaining unitary effect have not been complied with, refusing requests for unitary effect

  • 3. Publishing translations during the transitional period
  • 4. Setting up and maintaining a new "Register for unitary patent

protection" – containing entries re. assignment, transfer, lapse, licensing, limitation or revocation of European patents with unitary effect

International Legal Affairs 6

Unitary patent protection – New tasks for the EPO (II)

  • 5. Collecting annual fees for European patents with unitary effect
  • 6. Distributing part of the annual fees to the participating Member States
  • 7. Administering a compensation scheme

– reimbursement of translation costs (up to a ceiling) for certain applicants filing applications in an official language of the Union

  • ther than English, French or German
  • New tasks are deliberately conceived as straightforward ex parte

registration tasks – carried out by the EPO on the basis of "internal rules of the EPO" – decisions of the EPO re. unitary patent protection may be appealed to the Unified Patent Court

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International Legal Affairs 7

Challenges for the EPO and Member States

  • Target date for start of new system: "early 2015"
  • Member States have set up a Select Committee to adopt the legal

and financial framework – discussion on draft implementing rules has started

  • on the model of the tried and tested rules and procedures in

the EPC, incl. remedies such as restitutio, additional fee in case of late payment – discussion on financial aspects will start soon

  • critical is the overall financial sustainability of new system

– costs for EPO: new tasks, compensation scheme – distribution to Member States – setting the level of annual fees » low enough to be attractive to users » high enough to ensure cross-subsidy of European patent grant procedure at the EPO

International Legal Affairs 8

Unified Patent Court

  • Supranational – but not an institution of the European Union
  • Dealing with disputes between private parties
  • Specialised in patent litigation
  • Court of First Instance and Court of Appeal
  • Link with the Court of Justice of the EU, as any national court
  • Decentralised Court of First Instance composed of

> a central Division

  • with seat in Paris and 2 sections in London and Munich

> a number of local divisions hosted by EU Member States > a number of regional divisions shared by a group of Member States

  • Centralised Court of Appeal (in Luxembourg)

The Unified Patent Court - Key features

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International Legal Affairs 9

LD LD LD LD LD Court of Justice

  • f the

European Union

…

A number of

Local Divisions

set up in the Member States

RD RD

A number of

Regional Divisions

set up jointly by several Member States

…

A Central Division

Court of First instance

Seat in Paris

–

Office of President of CFI (B)(D)(E)(G)(H)

Section in London

–

(A)(C)

Section in Munich

–

(F)

Court of Appeal

with seat in Luxembourg RD

will mostly hear

  • revocation actions and (in case of bifurcation)

counterclaims for revocation

  • actions for declaration of non-infringement
  • actions against decisions of the EPO re. UPP

will mostly hear

  • infringement actions and counterclaims for revocation
  • actions for provisional and protective measures and injunctions
  • actions for damages or compensation (provisional protection, licences of right)
  • actions relating to the right based on prior use of the invention

Patent Arbitration and Mediation Center Lisbon & Ljubljana

Appeals based on points of law matters of fact

Training Centre for judges Budapest Requests for preliminary rulings

International Legal Affairs 10

> The 25 Signatory States have set up a Preparatory Committee which has distributed preparatory work five subgroups – Legal Framework group – Financial Framework group – IT group – Facilities group – Human resources and training group

  • For further details on progress, see a dedicated website launched by

the Preparatory Committee, at http://www.unified-patent-court.org/ – roadmap with list of tasks to be dealt with before start of

  • perations

– public consultation and hearing on the UPC's Rules of Procedure

The Unified Patent Court - Preparatory work

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International Legal Affairs 11

UPP and UPC: what you need to think about now

  • It's all about choices

– not only between

  • new UPP (which offers protection in 25 MSs + one-stop shop

post-grant + protection at the EU's external borders) or

  • "classical" EP (validation and maintenance country by country)

– but also between

  • litigation in the UPC (mandatory for UPP) and, within the UPC,

between different divisions or

  • in national courts (if opt-out and choice of forum during

transitional period for EP)

  • Need to compare costs UPP-EP

– but level of renewal fees must be known for complete picture

  • Choices must be well informed and adapted to business model

– no "one size fits all"

  • To leave all options open for the time being, make sure that any new

EP application designate all 25 EU Member States

International Legal Affairs 12

Further questions

  • More information on the EPO's Website at

http://www.epo.org/law-practice/unitary.html

  • Questions can always be addressed via e-mail to

International_legal_affairs@epo.org

  • Thank you for your attention