IS 2016 THE FINAL STRETCH BEFORE THE ENTRY IN FORCE OF

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1 IS 2016 THE FINAL STRETCH BEFORE THE ENTRY IN FORCE OF THE UNITARY PATENT AND THE UNIFIED PATENT COURT? By Christian TEXIER Partner, REGIMBEAU European & French Patent Attorney And Sylvain THIVILLIER Head of REGIMBEAU Munich office European & French Patent Attorney Paris/Munich, 4 February 2016 For memory, on 11 th and 17 th December 2012 the European Parliament and the Council of the European Union respectively adopted two new Regulations N 1257/2012 and N 1260/2012 relating to the creation of a European patent with a unitary effect ( Unitary Patent ) and to the translation regime for this unitary patent. Immediately after, on 9 th February 2013, 25 member States signed an International Agreement on the creation of a Unified Patent Court 1 (UPC). The ratification process of the agreement is now well advanced, with, on 19 th January 2016 Finland becoming the 9 th country, after Austria, Belgium, Denmark, France, Luxembourg, Malta, Sweden and Portugal, to complete this procedure. The reference texts defining the Unitary Patent and the Unified Patent Court allow us already to identify certain general principles for these systems. During the last 2 years, the Preparatory Committee of the UPC has done tremendous work to draft the rules of implementation for these new systems, rules which should be adopted in the following (next few?) months. 1 The following 25 States signed the Agreement on the Unified Patent Court : Germany; Austria; Belgium; Bulgaria; Cyprus; Denmark; Estonia; Finland; France; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Portugal; Czech Republic; Romania; United Kingdom; Slovakia; Slovenia and Sweden. 1

2 What is a Unitary Patent? The Unitary Patent is a patent granted by the European Patent Office (EPO) according to the procedures defined in the European Patent Convention (EPC) 2. The patentee has one month from the publication of the mention of the grant to submit a specific request for unitary effect before the EPO 3. What are the Conditions for obtaining a Unitary Patent? Obtaining a Unitary Patent implies the granting of a European Patent with an identical set of claims in all the EU countries that have agreed to the enhanced cooperation for their territories 4. What are the principal effects and benefits of the Unitary Patent? Where, after granting by the EPO, the current European patent splits into a collection of national titles subject to diverse legal regimes and national procedures, the Unitary Patent will have an equal effect throughout each and every EU country that has agreed to the enhanced cooperation 5. The obvious consequence of this is that if a Unitary Patent is revoked, the revocation will be valid in all the member countries. Will it be possible to combine a European Patent and a Unitary Patent? No. Once the Unitary effect has been registered, the European Patent ceases to have an effect in the countries covered by the Unitary Patent. However, for strategical reasons, and principally through the use of divisional applications, we can consider the filing of a European Patent that has different claims or national demands in certain countries, using parallel titles with slightly different scopes, enabling the accumulation of a Unitary Patent and a Patent with a national effect. 2 European Patent Convention, 5 th October 1973, as amended by the Act revising the Article 63 of the EPC, 17 th December 1991 and the Act revising the EPC, 29 th November Open System : Any owner of a European Patent, whether a National or a resident of an EU or other country, may request a Unitary Patent. 4 In January 2016 only Spain and Croatia are still not part of the enhanced cooperation having adopted the Unitary Patent. The Unitary Patent will therefore apply in the following 26 EU countries, once they have ratified the regulations : Germany; Austria; Belgium; Bulgaria; Cyprus; Denmark; Estonia; Finland; France; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Poland; Portugal; Czech Republic; Romania; United Kingdom; Slovakia; Slovenia and Sweden. However the Unitary Patent should not be applicable for Poland as it has not signed the UPC Agreement yet. 5 As of 1 st January 2016, the EU consists of 28 countries. Excluding Spain, Croatia and Poland, the regulations will come into effect once they have been ratified by the 25 countries listed in footnote 4. However, it is possible that the first Unitary Patents to come into force will have a more restricted geographical coverage if the agreement has not been ratified in all 25 countries at the date of entry into force. 2

3 What if the claims in the European Patent are not the same for all the member countries of the Unitary Patent s system? Where there are a different set of claims for certain Unitary Patent member countries, especially in the case of prior national rights, a Unitary Patent cannot be requested. Therefore, the traditional route of national validations in the designated countries will still be required. What about the renewal Fees for the Unitary Patent. One single annual renewal fee must be paid to the EPO to ensure maintenance of the Unitary Patent. The amount of this annual renewal fee is not yet known. According to the draft rules relating to fees of the Unitary Patent that adopt the "True Top 4" proposal, the amount of the renewal fee for maintaining a Unitary Patent should correspond to the total sum of the renewal fees currently paid for the four countries in which European patents are most frequently validated today (Germany, France, United Kingdom and the Netherlands). If such proposal were to be adopted, the Unitary Patent would be particularly interesting for applicants who usually validate their European Patents in at least 4 countries. What impact will the Unitary Patent have on non-eu countries that are members of the EPC or countries that have not ratified the UPC agreement? The Unitary Patent will have no impact on the countries 6 that are not part of the enhanced cooperation. For these countries, the current arrangements concerning the validations and payment of national renewal fees will be used. Moreover, even after the entry in force of the Unitary Patent, the national aspects of the European Patent must still be validated and renewed in the countries that have expressed their intention to participate in the enhanced cooperation, but that have not yet ratified the UPC agreement. When those new systems will be applicable? The implementation of the Unitary Patent will be synchronized with the entry into force of the Agreement on the Unified Patent Court, which will be on the 1 st day of the 4 th month after ratification of the agreement by 13 states, which must include France, Germany and the United-Kingdom. 6 Currently 14 countries : Italy, Spain and Poland plus Albania ; Croatia ; Republic of Macedonia; Iceland; Monaco; Norway; San Marino; Serbia; Switzerland/Liechtenstein and Turkey. 3

4 As of today, only 4 more ratifications, including those of Germany and the United Kingdom, are needed for the Agreement to enter into force. The United Kingdom government has published a proposed bill changing the UK Patents Act, to permit the application of the Unitary Patent and the Unified Patent Court. Once the bill is approved by Parliament, ratification of the United Kingdom should be conceivable by spring The entry into force of the Agreement for the creation of the Unified Patent Court and thus also of the Unitary Patent system is predicted for 1 st February The main rules for translation for the Unitary Patent During a transitional period of a minimum of 6 years and maximum of 12 years, the applicant will have to provide a full translation of the European Patent: a) in English, if the EPO procedure language is French or German; or b) in any one of the official languages of one of the EU State participating in the enhanced cooperation if the EPO procedure language is English. The translation is obligatory to obtain the unitary effect of the patent; however, it will not have any legal value. At the end of the transitory period, the EPO will take over by providing an automatic translation. Moreover, it is envisaged that in the case of litigation and depending on circumstances, the patent holder may be required to provide a full translation of the patent into an official language of the country where: a) the infringement took place; b) the head office of the alleged infringer is based or c) where the court procedure takes place. Jurisdiction of the Unified Patent court The implementation of the Unified Patent Court 7 aims at putting an end to conflicting decisions on the same European patent from one territory to another. The Unified Patent Court shall have the exclusive authority over Unitary Patents. From its entry into force it will also have jurisdiction over traditional European patents. However, for a transitional period of 7 years from the entry into force of the International Agreement, infringement or invalidation actions on European patents can, if desired, still be brought before the competent national courts. After this period the Unified Jurisdiction will also have the exclusive authority over European Patents. 7 Unified Jurisdiction should include a Court of First Instance and a Court of Appeal, without any other degree of jurisdiction, to avoid the lengthening of processes. Decentralized First Instance Courts, with the headquarters in Paris, should also include local and regional divisions. 4

5 It should be noted that during this transitional period, the applicant or patentee will have the possibility to opt-out from the exclusive competence of the Court. In light of these new systems that should be applicable as of early 2017, the whole team at REGIMBEAU is at your disposal with advice on the best strategies to implement in order to optimize your patent portfolio. Depending on the markets concerned, it may be of interest to act before the EPO in order to postpone the date of grant of a European patent or file the divisional applications in a timely manner, to ensure a grant date in 2017 or later, essential in order to request the unitary effect for a European patent. Having also noted that the Unified Patent Court will have jurisdiction not only for Unitary Patents but also, most likely, to all European Patents (exclusively after a 7 year transitional period), a strategy may be considered to file national patent applications in order to avoid this single European jurisdiction. We also recommend that you review your patents portfolio to decide as soon as possible which European patents and European patent applications are to be opted-out. Such review should preferably be done by autumn of 2016 to ensure that the opt-out applications are filed before the entry into force of the Unified Patent Court. About REGIMBEAU: REGIMBEAU is IP law firm mainly based in France which, for more than 80 years, has been assisting companies and private and public project developers to protect, enhance and gain profit from their innovations (patents, trademarks, designs). Fifteen partners head a team of more than 200 people whose skills are put into practice in every strategic aspect of Intellectual Property - business intelligence and information search, license agreements, IP portfolio audits, partnership negotiations, acquisition of industrial property rights, litigation. Thanks to its wide-ranging expertise, REGIMBEAU (present in Paris, Rennes, Lyon, Grenoble, Montpellier, Toulouse, Caen and Munich) can meet its clients' needs for international strategic consulting while preserving personalized relations of the highest quality. 5