Unitary Patent System

1. SARAVANAN ASARAVANAN A
PhD CandidatePhD Candidate
RGSOIPLRGSOIPL

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2

3.  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

4.  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

5.  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

6.  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

7. 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

8. 1) The European Coal and Steel Community Treaty-) The European Coal and Steel Community Treaty-
1952:1952:
 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

9. 2) The European Economic Community Treaty – 1958:2) The European Economic Community Treaty – 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

10.  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

11.  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

12.  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

13.  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

14.  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

15.  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

16.  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

17.  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

18.  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

19.  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

20.  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

21.  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

22. 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

23.  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

24.  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

25.  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

26.  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

27.  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

28.  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

29.  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

30.  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

32.  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

33.  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

34.  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

36.  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

37.  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

38.  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

39.  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

40.  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

41.  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

42.  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

43.  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

44.  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!