Patent Protection: Europe

Transcription

1 Patent Protection: Europe Currently available options: National Patent European Patent (EP) Centralised registration procedure (bundle of nationally enforceable patents) Applicant designates the states for validation Different rules for national validations (e.g. translation requirements) New option: Unitary Patent (UP) Will be available in addition to the other two options Uniform effect (= one patent) for all EU Member States (excluding Italy and Spain) based on a new system 1

2 Unitary Patent Protection in Europe > Enhanced Cooperation on Unitary Patent (UP) and > Translation arrangements EU Member States with UP EU Member States without UP Not EU Member States 2

3 EP v. Unitary Patents in Europe European Patent (EP) Unitary Patent (UP) Registration authority > EPO > EPO Registration fees > Different, depending on the designated EPC states > Uniform fee, the amount is not determined yet. Language of filing Required translations > German, English, or French > If the application is filed in another language, a translation into German, English or French is necessary (within two months). > Different, depending on the designated EPC states (London Protocol) > German, English, or French > Planned: Machine translation into all languages of the member states > Transition time (max.12 years): German or French filing -> + English translation English filing -> + translation into one of the Member States languages Validation > National rules of the designated EPC states (= bundle of rights) > Directly with the grant of the patent in all EU Member States (= one patent) 3

4 Unified Patent Court (UPC) Where? > UPC Agreement signed but not yet fully ratified Expected UPC Member States EU but possibly not UPC Member States EPC but not EU Member States 4

5 UPC Rulings on UPs and EPs > UPC will have ruling on both UPs and EPs > Decisions of UPC shall cover: In case of UPs, the territory of UPC Member States In case of EPs, the territory of UPC Member States for which the asserted EP has taken effect EP can be revoked by UPC for UPC Member States and remain in force in other EPC Member States for which it was validated 5

6 UPC Court Structure Preliminary Rulings (Art. 267 TFEU) European Court of Justice (ECJ) 2nd Instance Court of Appeal Luxemburg 1st Instance Local Division Regional Division Central Division Paris, London, Munich 6

7 UPC Central Division Competence Paris London Munich Performing operations, transporting (B) Textiles, paper (D) Human necessities (A) Chemistry, metallurgy (C) Mechanical engineering, lighting, heating, weapons, blasting (F) Fixed constructions (E) Physics (G) Electricity (H) ` 7

8 UPC Local/Regional Divisions Options If an infringement action is pending before Local/Regional Division and counterclaim for revocation is filed, the Local/Regional Division has the following options (Art. 33 (3) UPC Agreement): Proceed with case on both and request for technically qualified judge or Refer counterclaim to Central Division and a) suspend or or With consent of parties, refer complete case to Central Division b) proceed with infringement proceedings If a revocation action is pending before the Central Division and action for infringement between the same parties on the same patent is brought in (any) Local/Regional Division, this Local/Regional Division may act on infringement action as above. 8

9 UPC Transitional Period & Opt-Out Competence of new UPC (automatically after entry into force) Competence of national courts (as before the UPC system) Proprietors and applicants of EPs may opt-out 7 years transitional period Opt-out only possible as long as UPC proceedings were not initiated Opt-out may be exercised up to 1 month before end of transitional period Opt-out is withdrawable Withdrawal only possible as long as national proceedings were not initiated Opt-out remains effective after expiry of the transitional period 9

10 UPC Opt-out for EPs > Opt-out application must be lodged with the UPC Registry, containing: > details of the patent/application (and any SPC) > name and address of proprietor/applicant > One fee is payable in respect of all designations > Opt-out is effective from the date of entry in the UPC Register Application UPC Registry 10

11 UPC Opt-out for EPs > Sunrise" provision (Rule 5.13 of 16 th draft Rules of Procedure) allows proprietors to opt-out European patents at the EPO before the UPC doors open > EPO will transfer all sunrise opt-out applications to the Registry on the first day of the UPC, preventing pre-emptive actions Transfer Application EPO UPC Registry 11

12 Unitary Patent and UPC Unknown > Date of the new regime to come into force (no earlier than late 2015?) > Fees associated with the Unitary Patent and the UPC > Number of countries that will ratify the UPC Agreement and when > Variations in speed and approach between UPC divisions 12