Overview of the Unitary Patent and the Unified Patent Court Mr. Michael Frohlich , Director Unitary Patent Tokyo, November 2017 European and International Legal Affairs
Overview of the Unitary Patent and the
Unified Patent Court
Mr. Michael Frohlich , Director Unitary Patent Tokyo, November 2017 European and International Legal Affairs
European Patent Office
Why do we need a Unitary Patent?
What is the Unitary Patent?
How to obtain a Unitary Patent?
What is the territorial scope of a Unitary Patent?
What are the costs of a Unitary Patent?
What are the key benefits of a Unitary Patent?
2
Table of contents Unitary Patent:
European Patent Office
The entry into force of the EPC in October 1977 provided Europe with a very successful centralised patent granting procedure.
3
Why do we need a Unitary Patent?
Centralised granting procedure for European patents
…
IT
ESNLBG CH…
European
patent
application
Filing and
formalities
examination
Search report
with preliminary
opinion on
patentability
Grant of
European
patent
Refusal or
withdrawal
of
application
Substantive
examination
Limitation
Revocation
Opposition
proceedings
Appeal
proceedings
UK
FR
DE
No centralized post-grant procedureAfter the grant by the EPO, a Europeanpatent requires validation in each of thedesignated states to retain its protectiveeffect and be enforceable againstinfringers.
European Patent Office
Shortcomings of the current system in the post-grant phase, e.g.
the European patent, as a bundle of patents "with national effect", is
subject to national legal regimes as regards:
translation requirements and national renewal fees,
infringements, rights conferred by the patent and limitations,
licensing, transfers and registers.
4
Why do we need a Unitary Patent? (cont’d)
European Patent Office
The fragmentation of post-grant procedures results in:
high costs and complexity for users,
patent protection limited to a few countries,
diverging scope of protection according to national law.
5
Why do we need a Unitary Patent
European Patent Office
An alternative, simplified and cost-effective route to patent protection,
which does not replace the current routes (classical European or
national patents),
but provides a new, additional option to users.
6
What is the aim of the Unitary Patent?
European Patent Office
The Unitary Patent is a European patent granted by the EPO under
the EPC's rules and procedures, to which, upon request of the patent
owner, unitary effect is given for the territory of up to 26 Member
States participating in the Unitary Patent scheme.
The new Unitary Patent replaces the current national validations by a
centralised post-grant (validation) procedure at the EPO.
7
What is the Unitary Patent?
European Patent Office
The Unitary Patent provides users with a one stop shop for all
subsequent transactions.
The Unitary Patent provides uniform protection in contrast to the
classical European patent which is subject to diverging national laws.
8
What is the Unitary Patent? (cont'd)
European Patent Office
The Unitary Patent will co-exist with national patents and with classical
European patents.
Patent owners will be able to choose between various combinations of a
Unitary Patent, classical European patents, and national patents, e.g.
UP combined with EP:
a Unitary Patent for up to 26 Member States of the European Union
which participate in the Unitary Patent scheme, combined with
a classical European patent taking effect in one or more EPC
Contracting States which do not participate in the scheme
(e.g. Spain, Switzerland, Turkey, Norway, Iceland, etc.).
9
What is the Unitary Patent? (cont'd)
European Patent Office 10
How to obtain a Unitary Patent?
GrantExamination Opposition AppealFiling Search
European Patent with
Unitary Effect
in the territories of up to
26 Member States
Request
by the
patent
proprietor
Same grant procedure as for a classical European Patent
European Patent Office
Requirements for the registration are very simple and straightforward.
There are only two substantive requirements.
Unitary effect can only be requested for European patents that were
granted:
in respect of all 26 participating Member States, and
with the same set of claims for all of them.
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How to obtain a Unitary Patent? (cont'd)
European Patent Office
Procedural requirements
Filing of the request:
by the patent owner in writing,
in the language of the proceedings,
within one month following the publication of the mentioning of
the grant.
The request must contain: the number of the European patent
concerned, the particulars of the proprietor(s), and if a representative
has been appointed also the particulars of the latter.
12
How to obtain a Unitary Patent? (cont'd)
European Patent Office
During a transitional period, a translation of the European Patent has
to be submitted with the request:
Full EN translation if the patent is granted in FR or DE,
full translation into any language of the EU if the patent is granted in
EN,
these translations are for information purposes only and have no
legal effect.
13
How to obtain a Unitary Patent? (cont'd)
European Patent Office
The EPO is currently finalising the technical implementation.
The procedure for filing requests for Unitary Patents will be fully
automated.
Electronic forms will be very simple and straightforward to fill in and
are designed in a way to avoid all possible procedural/formal errors.
Non-European users will need a European representative to file the
request.
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How to obtain a Unitary Patent? (cont'd)
European Patent Office
Procedure for registering a Unitary Patent is free of charge.
Annual renewal fees have to be paid to the EPO which are equivalent
to the fees currently to be paid for a patent validated in four Member
States.
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What are the costs of a Unitary Patent?
European Patent Office
The fee level offers very good value for money. It is particularly
attractive for the first 10 years, which is the average life-time for a
European patent with the accumulated fees less than EUR 5000.
A fee reduction of 15% will be granted to patent owners who have
registered with the EPO a statement offering licences of rights.
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What are the costs of a Unitary Patent? (cont'd)
European Patent Office
"Top 4" approach for the renewal fees:
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What are the costs of a Unitary Patent? (cont’d)
European Patent Office
Fees can be paid by patent owners directly to the EPO, there is no
need to use a Representative.
Payments can be made:
by bank transfer to a bank account held by the EPO, or
via a debit or deposit account at the EPO.
For more detail see: http://www.epo.org/law-practice/unitary/unitary-
patent.html
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What are the costs of a Unitary Patent? (cont’d)
European Patent Office
The comparison of costs for the Unitary Patent and the classical
European patent should not only take into account the level of
renewal fees, but also the transactional costs, such as:
attorney fees for validations,
translation costs for validations,
publication fees to be paid to national patent offices and fees for
attorneys or other service providers for maintenance (renewal fee
payments),
which means that a Unitary Patent will be less costly than a European
patent maintained in 4 countries.
For more detail see:
http://www.epo.org/law-practice/unitary/unitary-patent.html19
What are the costs of a Unitary Patent? (cont’d)
European Patent Office
Simplified and cost-efficient post grant administration:
One-stop shop for renewal fee payments,
One-stop shop for registering post-grant transactions such as
transfers of rights or licenses in the Register for Unitary Patents,
One-stop shop for offering licenses of rights in the Register of
Unitary Patents (resulting in a 15% reduction of the renewal fees).
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What are the key benefits of a Unitary Patent?
European Patent Office
Better value for money:
Broader territorial protection in up to 26 Member States,
Uniform protection instead of the current patchwork of national
legislation governing the scope of protection, exceptions and
limitations and available remedies,
Improved protection at the external boarders of the EU against
imports of counterfeit products.
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What are the key benefits of a Unitary Patent? (cont'd)
European Patent Office
Better business opportunities:
More flexibility for trade and investment in the EU Single Market,
Improved access to venture capital for start-ups,
Enhanced opportunities for licensing technology transfers.
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What are the key benefits of a Unitary Patent? (cont'd)
European Patent Office
Unitary effect covers only those participating Member States for
which the UPC Agreement has entered into force ie which have
ratified the UPC Agreement "at the date of registration of unitary
effect“.
In the first years there will be some Member States missing and
consequently there will be different generations of Unitary Patents
with a different territorial coverage, which will be clearly indicated for
each UP in the Register.
There is no automatic extension of the territorial coverage of a given
Unitary Patent to other participating Member States which ratify the
UPC Agreement after the registration of unitary effect by the EPO.
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What is the territorial scope of a Unitary Patent?
European Patent Office
Why do we need a Unified Patent Court?
The Unified Patent Court in a nutshell
Structure of the court
Competence
Judges
Language of proceedings
Procedure
Remedies
Appeals
Court fees and recoverable costs
Key benefits of the Unified Patent Court
Opt-out
Implications of the Brexit
Process towards the entry into operation24
Table of contents Unified Patent Court:
European Patent Office
Why do we need a Unified Patent Court?
The fragmented litigation system and parallel litigation before different
national courts lead to:
High costs and complexity,
Conflicting decisions of national courts and legal uncertainty,
Long delays in countries which have no specialised patent courts,
Risks for patent holders and third parties.
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European Patent Office
The UPC is a supranational court covering 25 Member States with
one action.
It has jurisdiction over Unitary Patents, as well as traditional
European patents (unless opted-out).
And exclusive competence in respect of:
infringements,
validity, and
provisional and protective measures and injunctions.
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The Unified Patent Court in a nutshell
European Patent Office
The UPC will employ specialised patent judges – both legally and
technically qualified judges – and will apply its own autonomous
substantive and procedural law.
It has been designed to work in a highly efficient way with tight
deadlines and judgments at first instance to be delivered 1 year after
the start of the action.
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The Unified Patent Court in a nutshell (cont'd)
European Patent Office
Decentralised Court of First Instance with divisions in various
participating Member States insures proximity to the users:
A Central Division located in Paris and sections in London and
Munich,
Local Divisions located in individual participating Member States,
Regional Divisions located in certain Member States where two or
more participating Member States group together. Currently there is
only one Regional Division envisaged between Estonia, Latvia,
Lithuania and Sweden.
Centralised Court of Appeal located in Luxembourg.
28
Structure of the Unified Patent Court
European Patent Office 29
Structure of the UPC (cont'd)
Court of Appeal
Court of First Instance
Mediation and Ljublijana and Lissabon
Arbitration Centre
*Local divisions: AT, BE, DK, FI, FR, IT, NL, UK, + 4 in DE (Düsseldorf, Mannheim,
Munich, Hamburg)
°Regional division in Stockholm created by Estonia, Latvia, Lithuania and Sweden
Luxembourg
(Art. 9 UPCA)
Local Divisions*
[max.4/MS]
Regional
Divisions°
[min. 2 MS]
Central Division
Paris, London,
Munich
European Patent Office
Territorial competence covers in principle all
Member States of the European Union with the
exception of Croatia, Poland and Spain who
have not signed the UPC Agreement.
However, when the UPC comes into operation
not all Member States will have ratified the
Agreement. It is expected that Slovakia,
Czechia, Cyprus and Ireland will be missing
when the UPC will come into operation in 2018.
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Competence
European Patent Office
The UPC has normally exclusive jurisdiction for litigation in respect of
European patents, i.e. not only in respect of Unitary Patents but also
in respect of European bundle patents and Supplementary Protection
Certificates for medical products (SPC) based on such patents.
However, during a transitional period of 7 years actions concerning
European patents can still be brought before national courts on a
case by case basis, at the choice of a plaintiff.
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Competence (cont'd)
European Patent Office
In addition during this period European patents can be opted-out from
the jurisdiction of the UPC (more detail will be provided later on in the
presentation).
The national courts of the Contracting Member States remain
competent for national patents and European patents during the
transitional period and for European patents which are opted-out.
32
Competence (cont'd)
European Patent Office
Exclusive jurisdiction includes:
actions for actual or threatened infringements and related defences,
including counterclaims concerning licences,
actions for declarations of non-infringement,
actions for provisional and protective measures and injunctions,
actions for revocation and for declaration of invalidity,
33
Competence (cont'd)
European Patent Office
Eligibility criteria:
Highest standards of competence,
Proven experience in the field of patent litigation (can be acquired
by training).
34
Judges
European Patent Office
Legally and technically qualified judges:
Legally qualified judges shall possess the qualifications required for
appointment to judicial office in a Member State,
Technically qualified judges shall have a university degree and
proven expertise in a field of technology. They shall also have
proven knowledge of civil law and procedure relevant in patent
litigation.
Appointed for a term of six years, with possibility of re-appointment.
35
Judges (cont'd)
European Patent Office
Composition of the panels of divisions of the Court of First Instance
and the Court of Appeal:
Any panel shall have a multinational composition and shall be
chaired by a legally qualified judge,
At the Court of First Instance panels will sit in a composition of 3 or
4 judges as a rule.
36
Judges (cont'd)
European Patent Office
Upon request of a party or on its own initiative, any panel of a Local
Division or a Regional Division shall request the allocation of a
technically qualified judge.
Panels of the Central Division sit in a composition of two legally
qualified judges of different nationality and a technically qualified
judge.
At the Court of Appeal panels sit in a composition of 5 judges
(3 legally and 2 technical qualified).
37
Judges (cont'd)
European Patent Office
Language of proceedings at the Local and Regional Divisions is:
the official language of the Member State hosting the division,
the respective Member State may allow the use of additional
languages, in particular English (in practice all divisions will work in
English at least in addition to the national language),
with the agreement of the division, the parties may choose the
language of the granted patent. If the division disagrees, the parties
may request that the case be referred to the Central Division.
At the Central Division the language of the proceedings is the
language of the granted patent.
38
Language of proceedings
European Patent Office
Parties have to be represented in all proceedings before the UPC.
Representation may be undertaken:
by lawyers entitled to act before a court of a Member State, or
by European Patent Attorneys having appropriate qualifications,
such as a European Patent Litigation Certificate.
39
Representation
European Patent Office
Main features:
Staged procedure
Written phase predominant
Tight deadlines, very active case management
Order to preserve evidence available
Preliminary injunction available.
40
Procedure
European Patent Office 41
Structure of the proceedings
Judge-RapporteurSingle-judge/
Panel
Judge-
Rapporteur
Decision on the merits
Decision on
damages
Judge-
Rapporteur &
Single-judge/
Panel
Estimated duration from filing to judgment: one year
At any stage of the proceedings, Court to examine possibilities of a settlement
(may propose that the parties make use of the Mediation and Arbitration Centre)
Written
ProcedureInterim
Procedure
Oral
Procedure
DamagesWritten, Interim,
Oral Procedure
Costs
European Patent Office
Permanent injunctions:
The UPC has the discretion not to grant a permanent junction if
considering the circumstances of the case, an injunction would be
disproportionate,
The principle of proportionality is a guiding principle under the EU
law (in particular the EU Directive on the Enforcement of Intellectual
Property Rights).
42
Remedies
European Patent Office
Preliminary Injunctions
The UPC may order provisional measures including preliminary
injunctions:
if there is a sufficient degree of certainty that the applicant is entitled to
the claim,
taking into account also the potential harm to either party, and the
urgency of the action.
43
Remedies (cont'd)
European Patent Office
Basic outline:
All final decisions and orders of the Court of First Instance are
subject to appeal,
Procedural orders can also be appealed,
Any party may appeal if it is adversely affected.
Statement of appeal against a final decision has to be filed within two
months and the statement of grounds of appeal within four months of
its notification.
44
Appeals
European Patent Office
An appeal may be based on points of law and points of fact.
New facts and evidence may only be introduced where the
submission thereof could not reasonably have been expected
during first instance proceedings.
An appeal has no suspensive effect unless the Court of Appeal
decides otherwise on a party's request.
45
Appeals (cont'd)
European Patent Office
Costs for litigation at the UPC consist of:
Court fees,
Own attorney fees.
Costs are recoverable by the winning party:
if you win you benefit from a recovery of costs up to a certain ceiling
(the judges have the discretion to raise or lower the ceiling),
if you loose you have to pay your own costs + the opponent's costs
(up to the ceiling).
46
Court fees and recoverable costs
European Patent Office
The Rules on court fees essentially distinguish between two types of
actions and two types of applications:
for infringement actions and actions for declaration of non-
infringement there is a basic fixed court fee (€ 11 000) + a sliding
scale value-based fee for high value cases,
revocation actions and preliminary injunctions are subject to a fixed
fee only (€ 20 000 and € 11 000 respectively).
Small companies and micro-entities can claim a reduction of 60% of
the fees provided certain criteria are met.
47
Court fees and recoverable costs (cont'd)
European Patent Office
The ceilings for recoverable costs are based on the value of the case.
The maximum ceiling for recoverable costs for cases worth of more
than 50 million EURO has been fixed at 2 million EURO.
Upon request, the UPC has the discretion to lower the ceiling if the
amount of recoverable costs of representation to be awarded to the
successful party threatens the economic existence of the requesting
party, especially if the latter is a small entity, such as an SME.
48
Court fees and recoverable costs (cont'd)
European Patent Office
Better value for money:
One action and one judgement cover up to 25 EU Member States,
No risk of parallel lawsuits in different Member States with resulting
costs and complexity,
No risk of contradictory judgements on validly and infringement of
the patent and of legal uncertainty,
No divergence of the scope of the patent protection and its
limitations because of harmonized Rules in the UPC Agreement .
49
Key benefits of the Unified Patent Court
European Patent Office
Better value for money:
Highly experienced and specialized judges,
Involvement of technical judges qualified in the field of technology
concerned,
Specially developed Rules of Procedure designed to deliver speedy
and high quality judgements within one year.
. 50
Key benefits of the Unified Patent Court (cont’d)
European Patent Office
Better business opportunities:
Enhanced opportunities for licensing,
More flexibility for trade and investment in the EU Single Market.
. 51
Key benefits of the Unified Patent Court (cont’d)
European Patent Office
The possibility to opt-out patents from the jurisdiction of the UPC only
applies to classical European bundle patents and not to Unitary
Patents. For Unitary Patents the UPC has exclusive jurisdiction from
the beginning.
The declaration to opt-out is to be submitted to the Registry of the
Court and is entered into the Register of the UPC.
52
Opt-out
European Patent Office
The declaration may also be withdrawn (opt-in).
Opt-outs can only be filed as long as no action has been brought yet at
the UPC.
Opt-ins are possible only as long as no action has been brought before
a national court.
Opt-outs can be registered already before the entry into force of the
UPC Agreement and the start of operations of the UPC during a
so-called "sun-rise" period, which is likely to start 3 months before the
entry into operation of the UPC.
53
Opt-out (cont'd)
European Patent Office
Opt-outs and opt-ins are free of charge.
There is no need to have a professional representative.
However, the person filing the opt-out will need to authenticate his/her
identity electronically.
54
Opt-out (cont'd)
European Patent Office
The implications of Brexit
There are no immediate implications for the participation of the UK
either in the UPC or the Unitary Patent.
Even though the UK has officially notified the EU that it intends to
leave the EU, the UK will remain an EU Member State for at least 2
years and can participate without problem in both systems.
The question is only what will happen once the UK leaves the EU:
Will the UK have to or want to leave the UPC or the Unitary Patent,
once it leaves the EU?
55
European Patent Office
There have been legal doubts expressed as to whether the UK can
continue to participate in the UPC post Brexit. These doubts are
based on an opinion from the Court of Justice of the EU from 2011
(opinion 01/09).
At the time this opinion was widely interpreted as excluding non-EU
Member States from the UPC although there was never any detailed
analysis and no detailed discussion.
56
The implications of Brexit
European Patent Office
Recent opinions of legal experts based on a more detailed analysis
have come to the conclusion that the participation of the UK in the
UPC post Brexit would legally be possible.
There are some legal arrangements/amendments to the UPCA to be
made which are not difficult if there is a political will. Whether there is
such a political will may become clearer once the Brexit negotiations
are more advanced.
57
The implications of Brexit (cont'd)
European Patent Office
If the UK has to or wants to leave the UPC and/or the Unitary Patent
post Brexit this will not lead to legal uncertainty affecting cases
pending before the UPC or a loss of patent protection in the UK.
Under the principals of legal certainty and the protection of acquired
rights, which are guiding principles of international, European and
national law, legal arrangements will have to be made to prevent any
effect on pending cases and any involuntary loss of protection in the
UK.
58
The implications of Brexit (cont'd)
European Patent Office
14 Member States (including Italy in February) have ratified the UPC
Agreement,
2 more Member States have received parliamentary approval for the
ratification and are expected to complete the ratification soon
(Slovenia and Latvia),
2 more Member States have finalized the ratification bills but not yet
launched in the national Parliament.
59
Process towards the coming into operation
European Patent Office
The ratification in the UK, which has been delayed because of the
elections, is now expected before the end of this year. The UK has
already obtained the parliamentary approval for the ratification of the
UPCA. The last outstanding step is the parliamentary approval of two
orders implementing the Protocol on Privileges and Immunities into
national law, which have been launched in the UK and the Scottish
Parliaments.
In Germany parliamentary approval for the ratification has been
obtained on 31/3/2017. Germany will however envisage to withhold
the formal ratification until the fall to allow for an entry into force of the
UPCA in early 2018. Some more delays could be caused by a
complaint at the Constitutional Court against the ratification bill.
60
Process towards the coming into operation (cont'd)
European Patent Office
Before the coming into force of the UPCA there is a need to pass
through a period of provisional application of about 6 - 8 months to get
everything ready for the coming into operation of the UPC.
This period will start with the entry into force of the Protocol on the
Provisional Application, after its ratification by Germany. The entry into
force of the Protocol requires that is has become binding for 13
Member States including Germany, France and the UK. For the UK it is
already binding. The complaint against the ratification bill before the
Constitutional Court could cause some delay.
61
Process towards the entry into operation (cont'd)
European Patent Office
With the beginning of the provisional application the UPC will acquire
legal personality, its governing bodies (Administrative, Advisory and
Budget Committees) will be set up.
The Administrative Committee will formally adopt all legal texts,
including the Rules of Procedure and all decisions prepared by the
Preparatory Committee and will recruit the judges and staff for the
UPC.
62
Process towards the entry into operation (cont'd)
European Patent Office
The recruitment of the judges (about 40 Legally Qualified and 50
Technically Qualified Judges) will be the most challenging task for the
governing bodies (Administrative and Advisory Committees).
Vacancies were already published by the Preparatory Committee
which received 840 applications, 5% for both TQJ and LQJ, 62% for
TQJ and 32% for LQJ. Among the former are mostly European patent
attorneys, among the latter are all the renowned judges from the
specialist patent courts in Germany, the UK, the Netherlands and
France.
63
Process towards the entry into operation (cont'd)
European Patent Office 64
Luxembourg: Court of Appeal
European Patent Office 65
London: Life Sciences Section of the Central Division Aldgate Tower
European Patent Office 66
Düsseldorf: Local Division
European Patent Office 67
Italy: Local Division
European Patent Office 68
Letter box of the UPC - Munich Section of the Central Division
European Patent Office
Thank you for your attention!
Mr. Michael Frohlich
Director, Unitary Patent,
European and International Legal Affairs
+49 (0)89 2399 5200
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