Unitary Patent Procedure before the EPO

Unitary Patent Procedure before the EPO Platform Formalities Officers EPO The Hague H.-C. Haugg Director Legal and Unitary Patent Division D.5.2.3 20 April 2017

Part I General Information

What is the legal basis (1) Unitary Patent Regulations: EU Regulation No. 1257/2012 of 17 Dec 2012 creating the European Patent with unitary effect (OJ EPO 2013, 111-131); EU Regulation No. 1260/2012 of 17 Dec 2012 relating to the translation arrangements for European Patents with unitary effect (OJ EPO 2013, 132-142). 3

What is the legal basis (2) Secondary legal framework of the Unitary Patent (completed by the EPO s Administrative Council s Select Committee on 15 Dec 2015): Rules relating to Unitary Patent Protection (OJ EPO 2016, A39); Rules relating to Fees (OJ EPO 2016, A40); Budgetary and Financial Rules (OJ EPO 2016, A41); Rules relating to the Distribution of Fees among the participating EU Member States. 4

What is the legal basis (3) Agreement on the Unified Patent Court (UPCA; OJ EPO 2013, 287-364) Unitary Patent comes into operation together with the UPC, because Unitary Patents can be enforced or revoked only in a uniform way at the Unified Patent Court. 5

When will it be available The new system is expected to start at the end of 2017. The Unitary Patent Regulations are now in force for 26 EU Member States. The Unitary Patent Regulations apply from the date of the entry into force of the UPC Agreement. o UPCA enters into force three months after the deposit of the 13 th instrument of ratification, incl. the three most patent intensive Member States (FR, DE, GB). o So far, 12 EU Member States have deposited their instruments of ratification incl. FR, with several others having indicated their intention to ratify anytime soon. o The UK and DE are currently undertaking the national legislative steps to ratify the UPCA. 6

What are the key benefits Unitary Patents offer an attractive additional option for patent protection in Europe providing better value for money: Broader territorial protection Uniform protection for up to 26 participating Member States. Reduction of red tape One-stop-shop at the EPO instead of national validations and translation requirements and fee payments with several national patent offices, resulting in a major reduction of complexity and transaction costs: o o o o Centralised process for filing, examining and granting patents in exactly the same way as for classical European patents; Simple and straight forward post grant procedure instead of complex national validations; Simplified and cost-effective renewal fee payment; Centralised register maintained by the EPO; o Centralised administration of post-grant transactions by the EPO. 7

What are the key benefits (cont d) Cost efficiency: Filing of the request for the registration of Unitary Patents, examination, and registration is completely free of charge before the EPO. Business-friendly renewal fee pattern. A Unitary Patent will on average be less expensive than a classical European patent validated and maintained in four countries when comparing fees and all associated costs (see also above Slide 6). No post-grant translations are required for the purpose of obtaining a Unitary Patent (after an initial 6-year transitional period during which only one translation will be required for information purpose only having no legal effect). 8

What are the key benefits (cont d) Additional advantages for SMEs and universities Compensation scheme for natural persons, SME s and other entities domiciled in an EU Member State with regard to translation related costs. Better access to the internal market Broad territorial protection in up to 26 participating Member States will enable companies to enter more national markets depending on the initial success of the patented product or on business opportunities in other Member States. 9

The unitary patent: basic concept The unitary patent is a "European patent with unitary effect" It has unitary character and shall provide uniform protection and shall have equal effect in all the participating Member States A European patent will benefit from unitary effect at the request of the proprietor: post-grant attribution of unitary effect Single EPC procedure for European and "unitary patents EPC grant procedure remains unchanged 10

Territorial scope The unitary patent: basic concept Unitary effect only in those participating MS for which the UPC has entered into force "at the date of registration of unitary effect" (Art. 18(2) Reg. 1257/2012 Different generations of European patents with unitary effect with a different territorial coverage No extension of the territorial coverage of a given European patent with unitary effect to other Member States which ratify the UPC Agreement after the registration of unitary effect by EPO 11

The unitary patent: basic concept Unitary patent is an additional option besides national patents and classical European patents Combinations of classical European patent and unitary patent a unitary patent for the 26 participating EU Member States together with a classical European patent taking effect in one or more EPC Contracting States where the unitary patent does not take effect, such as for instance CH, ES, NO, TR No double protection by a unitary patent and a classical European patent on the territory of the 26 participating states Double protection by unitary patent and national patent to be considered at national level (Art. 139(3) EPC): different approaches possible 12

The unitary patent: basic concept Same grant procedure as for a traditional European patent Appeal proceedings European patent application Refusal or withdrawal of application Limitation Revocation Opposition proceedings Filing and formalities examination Search report with preliminary opinion on patentability Substantive examination Grant of European patent Request of the patent proprietor European patent with unitary effect in the territories of the 26 participating EU member states The European patent is deemed not to have taken effect as a national patent in the 26 participating EU Member States 13

Rules relating to unitary patent protection: UPP Division Legal Division will act as Unitary Patent Protection Division (UPP Division) (R. 4 UPR) managed by EPO President, who is responsible for its activities to the Select Committee Decisions taken by one legally qualified member EPO President may entrust to formalities officers some duties incumbent on the UPP Division involving no legal difficulties 14

Registration of unitary effect Substantive requirements (Art. 3(1) Reg. 1257/2012; R. 5(2) UPR) 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 All the 26 participating MS irrespective of whether UPC has taken effect for these States Patent granted for application filed before 1 March 2007 cannot benefit from unitary effect (Malta EPC accession) 15

Registration of unitary effect Formal requirements (Art. 9 (1)(g) Reg. 1257/2012; R. 6 UPR) Request to be filed in writing by patent proprietor with EPO no later than one month after the mention of the grant of the European patent in the European Patent Bulletin Use of trilingual EPO FORM 7000 highly recommended (not mandatory though) 16

Registration of unitary effect Unitary effect can also be requested if European patent was granted to multiple proprietors in respect of the same or different participating Member States. In such cases request for unitary effect shall preferably contain the appointment of one proprietor or representative as common representative If the request for unitary effect does not name a common representative, the requester first named in the request shall be deemed to be the common representative The common representative is entitled to act for them all if the request for unitary effect has been duly signed by all the proprietors or their representative(s) Co-proprietor who exclusively own a country or countries not territorially covered by unitary patent may not request unitary effect and cannot be designated as common representative 17

Registration of unitary effect The request has 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) EPC) (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: full EN translation if the patent is granted in FR or DE if the patent is granted in EN: full translation into any other official language of the EU 18

Registration of unitary effect If all the requirements are met the EPO registers unitary effect in the Register for unitary patent protection and communicates the date of this registration to the requester (R. 7(1) UPR) issues a specific certificate of UP The EPO rejects the request (after giving patentee the opportunity to comment) if the substantive requirements are not met or if the request is not filed in due time (one month period) In the latter case, a request for restitutio in integrum may be filed within two months of expiry of that one month period (R. 22(2) UPR) 19

Registration of unitary effect If the request is filed in due time but formal requirements are not met (R. 7(3) UPR) EPO invites the requester to correct them within a nonextendable period of one month Request is rejected if the requester fails to observe this time limit Restitutio in integrum in this non-extendable period of one month is excluded (R. 22(6) UPR) 20

Legal remedies against EPO decisions in relation to the unitary patent Appeal: Exclusive jurisdiction of the UPC Court of First Instance (Central Division) with regard to appeals against the decisions of the UPP-Division (Art. 32(1)(i) UPC Agreement) Application to annul or alter a decision of the EPO (R. 85 ff UPC RoP) Interlocutory revision by the EPO (R. 91 UPC RoP; R. 24 UPR) 21

Legal remedies against EPO decisions in relation to the unitary patent (cont d) Appealing the EPO s decision to reject the request for UPP-effect: Special procedure before the UPC (R. 97 UPC RoP) ( expedited action = lex specialis) Interlocutory revision not applicable (R. 85.2 RoP) application to annul EPO decision to reject a request for unitary effect to be lodged within 3 weeks of service of EPO decision standing judge to decide within 3 weeks appeal against decision of standing judge possible; to be lodged within 3 weeks of service of decision; standing judge of UPC Court of Appeal to decide within 3 weeks 22

Compensation scheme (1) Proprietors of European patents with unitary effect for which the European patent application was filed in an official language of the EU other than English, French or German are entitled to compensation for translation costs (R. 8 UPR; Art. 5 Reg. 1260/1257) Their residence or principal place of business must be in a Member State of the European Union and they must be a natural person or one of the following entities: small and medium-sized enterprises as defined in European Commission recommendation 2003/361/EC dated 6 May 2003, non-profit organisations as defined in Article 2, para.1(14) Reg. No 1290/2013, universities and public research organisations Compensation paid as lump sum of 500.- (Art. 4 RFeesUPP) 23

Compensation scheme (2) Request for compensation must be filed together with request for unitary effect and must contain a declaration that the proprietor of the European patent is a natural person or an eligible entity If the European patent application or the European patent was transferred before the request for unitary effect was filed, compensation will be granted only if both the initial applicant and the patent proprietor are natural persons/eligible entities If the unitary patent has multiple proprietors, compensation will be granted only if each proprietor fulfils all the eligibility requirements 24

Compensation scheme (3) EPO will notify proprietor whether compensation can be granted or not. It cannot be paid to the proprietor(s) until unitary effect has been entered in the Register Once compensation is granted, the proprietor(s) will keep it whatever happens to his status (e.g. he no longer fulfils the SME criteria or assigns his unitary patent to a new proprietor who does not meet the eligibility requirements) A negative EPO decision on the request for compensation may be appealed to the Unified Patent Court (UPC) 25

Costs (1) No fees are due at the EPO for the filing and examination of the request and for the registration of Unitary Patents. Business-friendly renewal fee level: The level of renewal fees is based on the so-called True TOP 4. This is the equivalent of the combined renewal fees payable in the top four pms where a European patent was most frequently validated at the time the renewal fee scale was adopted (DE, FR, GB, NL). For the first ten years, which is the average lifetime of a European patent, the aggregate costs of paying renewal fees for a Unitary Patent will be less than EUR 5.000. Full cost-saving potential of Unitary Patents materializes when considering also the indirect costs that currently arise when validating and maintaining a European patent, 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. 26

Simplified renewal fee payment: Costs (2) Patent holders can easily pay the renewal fees themselves directly to the EPO. One common renewal fee in one currency under a single legal regime, with no obligation to use a representative. Payments can be made by bank transfer or online payment methods. 27

Costs (3) 11th year 1 460 2nd year 35 12th year 1 775 3rd year 105 13th year 2 105 4th year 145 14th year 2 455 5th year 315 15th year 2 830 6th year 475 16th year 3 240 7th year 630 17th year 3 640 8th year 815 18th year 4 055 9th year 990 19th year 4 455 10th year 1 175 20th year 4 855 Additional fee for belated payment of a renewal fee = 50% of the belated renewal fee (Rule 2(1), item 2, RFeesUPP) Renewal fee reduction of 15% in case of a statement (offer) of licences of right (Rule 12 UPR, Rule 3 RFeesUPP) 28

Payment of renewal fees (1) Specificities with regard to the first renewal fees falling due Three month safety period under R. 13(4) UPR A renewal fee in respect of a unitary patent falling due within three months of the notification of the communication referred to in R. 7(1) UPR may still be paid within that period of three months without the additional fee under R. 13(3) UPR Course of six-month additional period under R. 13(3) UPR is unaffected: starts running from due date. However, R. 13(4) UPR has effect that an additional fee under R. 13(3) UPR does not have to be paid where renewal fee is paid within three-month safety period 29

Payment of renewal fees (2) Specificities with regard to the first renewal fees falling due Renewal Fees falling due between grant of European patent and registration of unitary effect (R. 13(5) UPR) Could in particular occur where procedure for registering unitary effect takes a long time owing (e.g. request for re-establishment of rights or involvement of UPC) If, at the end of such a procedure, decision to register unitary effect is finally notified to patent proprietor, unitary patent takes effect on the date of publication of the mention of the grant (Art. 4(1) Reg. No 1257/2012) owing to this retroactive effect, renewal fees would have fallen due for the period starting on date of publication of the mention of the grant and up to and including date of notification of R 7(1) UPR-communication 30

Payment of renewal fees (3) Specificities with regard to the first renewal fees falling due Renewal Fees falling due between grant of European patent and registration of unitary effect (R. 13(5) UPR) (continued) R. 13(5) UPR shifts the due date to the date of said notification and allows payment of renewal fees within three months of this notification without any additional fee If not paid within this three months period, R. 13(3) UPR applies, i.e. renewal fee(s) can still be paid with additional fee within six months, starting from date of notification of the R. 7(1) UPR-communication 31

Renewal fees: Rule 13(4) UPR 32

Renewal fees: Rule 13(5) UPR 33

Lapse Lapse cases provided for in R. 14(1) UPR (a) 20 years after filing date (b) if a renewal fee (and where applicable, any additional fee) is not paid in due time Lapse in case (b) deemed to have occurred on the date on which the renewal fee was due (R. 14(2) UPR) No surrender foreseen in Reg. 1257/2012 and hence in UPR 34

Representation (R. 20(1) and (3) UPR) Art. 133 and Art. 134(1), (5) and (8) EPC apply mutatis mutandis; the term Contracting States means Contracting States to the EPC here Natural or legal persons having their residence/principal place of business in a EPC Contracting State may act on their own behalf in proceedings before the EPO with respect to the unitary patent If this is not the case, a professional representative needs to be appointed: Proprietor will have to act through him in all the proceedings before the EPO regarding the Unitary Patent, including the filing of the request for unitary effect Fee payment not subject to compulsory representation (Art. 6 RFeesUPP in conjunction with Art. 6(1) RFeesEPC) 35

Licences of right (R. 12 UPR) Proprietor of unitary patent may file statement with EPO to the effect that he is prepared to allow any person to use the invention as a licensee in return for appropriate consideration (Art. 8(1) Reg. 1257/2012) Licence obtained under the system of licences of right will be treated as a contractual licence (Art. 8(2) Reg. 1257/2012). Statement will be entered in the Register for unitary patent protection (free of charge). Statement may not be filed as long as an exclusive licence is recorded in the Register or a request for the recording of such a licence is pending before the EPO Statement should preferably be made on dedicated Form 7001 36

Licences of right (R. 12 UPR) Renewal fees for the unitary patent which fall due after receipt of the statement will be reduced by 15% (see Article 3 RFeesUPP). any additional fee for belated payment will be calculated on the basis of the reduced renewal fee Statement may be withdrawn by the proprietor at any time by a communication to this effect to the EPO. Withdrawal will however only take effect if the amount by which the renewal fees were reduced is paid to the EPO (Rule 12(2) UPR). No request for recording an exclusive licence in the Register for unitary patent protection is admissible after the statement has been filed, unless that statement is withdrawn 37

Registering transfers, licences and security rights Rules 22 to 24 EPC apply mutatis mutandis to entries made in the Register for unitary patent protection (see Rule 20(2)(b) UPR in conjunction with Rule 16(1)(j) UPR) Full alignment with the current EPO practice with regard to register entries relating to European patent applications Rule 16(1)(j) UPR and Rule 20(2)(b) UPR are to be broadly interpreted so as to ensure that all types of national rights and legal means of execution can be recorded in the Register for unitary patent protection (explanatory remark 6 to Rule 16 UPR) Standard of proof: see explanatory remarks 8 to 13 to Rule 16 UPR 38

Publications and file inspection European Patent Bulletin (Part IV. of the Bulletin) Official Journal of the EPO File inspection and constitution, maintenance and preservation of files Special and separate file for unitary patent will contain the translations (R. 18 UPR, explanatory remark 3) No additional patent documents for unitary patent (except certificate) 39

Part II Online Filing of the UPP request

UP-7000 request 41

UP-7000 request 42

UP-7000 request 43

UP-7000 request - translation 44

UP-7000 request - translation 45

UPP request proprietors 46

UP-7000 request place of business 47

UP-7000 request - compensation 48

UP-7000 request - representation 49

UP-7000 request - authorisation 50

UP-7000 request payment of fees 51

UP-7000 request fee section 52

UP-7000 request - documents 53

UP-7038 subsequently filed documents 54

UP-7038 subsequently filed documents 55

UP-7038 request 56

UP-7038 fee section 57

The Unitary Patent Protection Register 58

The Register : New structure Two chapters: European procedure Unitary Patent Chapters expanded by default Panels identified with EP or UP Content specific (e.g.: events, file inspection in All documents ) 59

UP about this file - C0 (9) (38) (26) 60

Unitary Patent Protection UP about this file - sections Member states covered by Unitary Patent Protection Publication Date of registration of unitary effect List of countries at the date of registration 61

UP Event history Change : date of registration of unitary effect Decision on the request for unitary effect Register Alert will notify UP events 62

UP All documents: Table of contents File inspection restricted to UPP file (public documents) 63

European Patent Bulletin (24 new sections) Unitary effect registration date Proprietor Representative 64

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Thank you for your attention! More information about the Unitary Patent can be found on the EPO s website at: http://www.epo.org/law-practice/unitary/unitary-patent.html