THE NEW EU PATENT: COST-EFFECTIVE ALTERNATIVES FOR YOUR BUSINESS GRAHAM MURNANE (GLASGOW OFFICE), DR MARINA MAURO (MILAN OFFICE), DR BEN GRAU (MUNICH OFFICE)
EUROPEAN PATENT PACKAGE
EUROPEAN PATENT PACKAGE European Patent with unitary effect ("UP") Regulation (EU) No. 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements Regulations apply at the date of the entry into force of the Agreement on a Unified Patent Court (UPC Agreement) Unified Patent Court ("UPC") Unified Patent Court Agreement (16351/12)
UPC AGREEMENT RATIFICATION UPC will come into force in the 4th month after the 13th country has deposited its instrument of ratification, amongst them those with most filing activity (currently DE, FR, GB (Art. 89 UPCA)) By April 2016: 9 ratifications deposited: AT, FR, BE, SE, DK, PT, MT, LU, FI Ratification process at least underway in GB, NL, BG, IT, LT and DE It can be expected that UPC agreement comes into force and Court starts operation early 2017
EUROPEAN PATENT WITH UNITARY EFFECT - UP The European patent with unitary effect is a European patent, granted by the EPO under the rules and procedures of the European Patent Convention, to which, upon request of the patent proprietor, unitary effect is given for the territory of the 26 Member States participating in the unitary patent scheme.
EU, UPC, EPC, UP EU Member State EPC Contracting State ES: No UP, No UPC PL: UP, No UPC HR: later?
HOW TO GET A UP
UP REGISTRATION PROCESS
UP REGISTRATION REQUIREMENTS Filed after 1 March 2007 Unitary effect may be registered only if the European patent is granted: with the same set of claims in respect of all the 26 participating Member States Designation of all states (no withdrawal) Consent of all proprietors Request to be filed in writing in the language of proceedings and must include (R. 6 UPR) (a) particulars of the requester (as provided in R. 41(2)(c) UPR) (b) number of the European patent to which unitary effect shall be attributed, (c) information regarding the representative (as provided for in R. 41(2)(d) EPC) (d) a translation of the European patent as required under Art. 6 Reg. 1260/2012 during the transitional period (max. 12 years)
UPC KEY FACTS Supranational court that will cover all participating Member States in one action. Jurisdiction over new Unitary Patents, as well as traditional, non opt-out EPs Technical judges and legally qualified judges Own autonomous substantive and procedural law Judgements at first instance within approximately 1 year of the start of the action
WHY TO AVOID THE UPC
PROBLEMS / RISKS OF THE UPC Central invalidity attack on UP EP without opt-out All EP granted after transition period (max 14 years) Only central litigation 90% of patent litigation disputes are limited to one member state only Enhanced cost risk (court fees and recoverable costs) New law system without any case law Judges with different judicial experience working together
CIRCUMVENTING THE UPC National Patent EP in non-participating member states (ES Spain, NO Norway, IS Iceland, CH Switzerland, TR Turkey, MK Macedonia, AL Albania, RS Serbia, HR Croatia, PL Poland) EP with opt-out (during transition period of max. 14 years only) Note: Opt-out lasts for lifetime of the patent, unless later opted in
ARE NATIONAL PATENTS A TRUE OPTION?
TECHNICAL IP RIGHTS IN GB Patent Examined right 20 years of duration No utility model in GB Patent application may be filed in any language provided that an English translation is provided within 2 months from notification No claim fees
GB PATENT - KEY FACTS GB prosecution includes substantive examination Request for examination must be filed within 6 months of publication Accelerated examination available through Global Patent Prosecution Highway (GPPH) with US, JP, KR, CA, AU, RU, IL and several EP states (inc. DE, SE, NO etc) Accelerated examination available through Patent Prosecution Highway (PPH) with CN PCT (UK) Fast Track available if claims acceptable in written opinion of International Searching Authority Infringement and validity are dealt with by the same court
TECHNICAL IP RIGHTS IN IT Patent 20 years of duration Utility models 10 years of duration
ITALIAN PATENT KEY FACTS Possibility to get a Search Report made by the EPO free of charge Open to all applicants first filing in Italy, i.e. not claiming priority from another patent application Requires filing of English translation of claims Patent application may be filed in any language provided that the Italian translation is provided in 2 months
ITALIAN PATENT PROCEDURE Possible foreign filing Date X < 12 months Patent application filing Date X Minimum cost 50 Euro Bibliographic data publication Date X + 3 months Search report made by EPO Date X + ~ 9 months Publication of Patent application Search report Patentability opinion Date X + 18 months Grant Start patent examination by Italian Patent Office Reply to opinion Date X + ~ 36 months Date X + 21 months
IT PATENT PROSECUTION Reply to Patentability Preliminary opinion (Attorneys fee) Grant in about 3 years from filing without further examination Possibility to amend patent application and patent granted provided that no added subject-matter is introduced
TECHNICAL IP RIGHTS IN DE Patent Examined right 20 years of duration Utility model Registered right 10 years of duration Not available for methods
DE PATENT - KEY FACTS Patent application may be filed in any language provided that the German translation is provided within 3 (or 12) months Claim fees if more than 10 claims DE prosecution includes substantive examination Request for examination can be filed up to 7 years after the filing date If DE application is a first filing application, first examination report will be issued within 8 months Separate search request possible, but not obligatory Request for accelerated examination not legally coded but possible Jurisdiction over patent litigation and patent validity cases is split between different courts (bifurcated system)
QUALITY OF EXAMINATION REVOCATION RATES - DE V EP First instance Second instance Final decision (first and second instance) DE EP DE EP DE EP Valid 25% 25% 22% 24% 24% 27% Partially revoked Fully revoked 39% 36% 43% 43% 41% 40% 36% 39% 35% 33% 35% 33% Source: Henkel, J., and Zischka, H. (2015). Why most patents are invalid Extent, reasons, and potential remedies of patent invalidity.
FR AND NL PATENT KEY FACTS FR: Translation into French required NL: Application in English language possible, only claims in Dutch FR/NL: No substantive examination FR/NL: Possibility to amend patent application and granted patent, provided that no added subject-matter is introduced
COSTS
1. year 3. year 5. year 7. year 9. year 11. year 13. year 15. year 17. year 19. year ANNUITIES 6,000 5,000 Top 5 UP 4,000 EP (DE, FR, GB) EP 3,000 DE 2,000 NL GB 1,000 0 FR IT UP EP EP (DE, FR, GB) DE IT FR GB NL Top 5 35,555 24,090 25,034 13,170 8,424 5,608 5,833 11,040 44,075
OFFICIAL FEES DURING PROSECUTION EP DE IT FR NL GB PoA 20 filing fee 120 40 50 26 80 26 search fee 1,300 520 100 167 designation fee 585 examination fee 1,635 350 103 grant fee 925 16 90 total 4,565 390 86 636 180 295 Official fees for national TOP 5 total: 1587
WHEN GOING NATIONAL PCT States for which only a regional patent can be obtained (and not a national patent): BE Belgium IT Italy МТ Malta CY Cyprus LT Lithuania NL Netherlands GR Greece LV Latvia SI Slovenia IE Ireland MC Monaco FR France In order to go national for circumventing the UPC, priority based applications have to be filed instead of making use of the PCT!
CAN MURGITROYD HELP YOU?
MURGITROYD NATIONAL ROUTES One instruction - one key attorney DE, GB, IT, FR, FI, SE, NL, IE, AT, BE, LU, DK CH, NO (bold shows closed PCT-national routes) Centralised and harmonised prosecution Drafting/Prosecution languages: - EN, DE, FR, NL, SE, FI, IT, NO
THANKS TO THE AUDIENCE! Dr Ben Grau German and European Patent Attorney T: +49 (0) 89 3090 71100 E: ben.grau@murgitroyd.com Graham Murnane UK and European Patent Attorney T: +44 (0) 141 307 8400 E: graham.murnane@murgitroyd.com Dr Marina Mauro Italian and European Patent Attorney T: +39 02 8739 8550 E: marina.mauro@murgitroyd.com