Parole d’expert

Jean-Luc GAL, European Patent Office Brussels Bureau

Le brevet unitaire : un nouvel outil pour les inventeurs européens ?

Avec le soutien de :

Le brevet unitaire : un nouvel outil pour les inventeurs européens ?

Jean-Luc Gal, Chef du Bureau de Bruxelles OEB

Liège, 20 février 2013

Main objectives in the field of patent

•  About the EPO

•  What is a patent ?

•  How to grant a patent ?

•  The European patent grant procedure

•  2011 European patents' statistics

•  Creation of a Unitary Patent protection and Language arrangements

•  A Unified Patent Litigation System

•  Advantage of the new scheme

About us Mission As the patent office for Europe, we support innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention.

Autonomy •  Second largest intergovernmental

institution in Europe

•  Not an EU institution

•  Self-financing, i.e. revenue from fees covers operating and capital expenditure

Structure of the European Patent Organisation

The legislative body

§  made up of delegates from the member states

§  supervises the activities of the Office

§  has a specific legislative function

European Patent Organisation

Administrative Council European Patent Office

The executive body

§  responsible for examining patent applications

38 member states

European patent applications and patents can also be extended at the applicant's request to the following states:

Bosnia-Herzegovina • Montenegro

Albania • Austria • Belgium • Bulgaria • Croatia • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Iceland • Ireland • Italy • Latvia • Liechtenstein • Lithuania • Luxembourg • Former Yugoslav Republic of Macedonia • Malta • Monaco • Netherlands • Norway • Poland • Portugal • Romania • San Marino • Serbia • Slovakia • Slovenia • Spain • Sweden • Switzerland • Turkey • United Kingdom

What is a patent? •  A patent is a legal title granting its holder the right to prevent third parties

from exploiting an invention for commercial purposes without authorisation

•  In return for this protection, the holder has to disclose the invention to the public

•  Protection is granted: –  for a limited period, generally 20 years –  for a specific geographic area

What is patentable?

•  To be patentable, an invention must: –  have a technical character (e.g. comprise a product, process or

apparatus) –  be new –  involve an inventive step –  be industrially applicable

•  Some innovations are not patentable under the EPC: –  for example, mathematical methods or formulae, computer programs

and business methods as such are not regarded as inventions –  new plant or animal varieties and inventions whose commercial

exploitation would be contrary to "ordre public" or morality (e.g. the cloning of human life) are examples of inventions excluded from patentability

The benefits of patents (I)

For inventors, patents can: §  help safeguard financial returns from the commercial exploitation of the invention

§  give holders time to recoup their development costs

§  encourage further investment in R&D

The benefits of patents (II)

For the economy in Europe, patents are a prime source of new technical knowledge. Patents can help: •  identify new technological trends and new business partners

•  inspire further inventions

•  prevent the duplication of R&D in industry and universities

European patents foster technical innovation, which is crucial to competitiveness and overall economic growth in Europe

The different routes to obtain a patent

•  National route: starting with a national patent –  filing at the National Patent Office (NPO) –  possible extension to a European Patent (NPO -> EPO)

•  European Route: the European patent (not the Unitary patent) –  filing at EPO: designation of European countries for which a protection is

required –  The granted European patent becomes a bundle of national patents in each

selected country.

•  PCT: request for an international extension of the protection PCT: Patent Cooperation Treaty

–  same process of designation of countries for which the protection is requested (ex: JPO, USPTO, KIPO, SIPO, EN, DE, FR etc)

–  transmission of the application to the related competent Office (including the EPO) in charge of the International research report and preliminary opinion

–  International application enters into the regional/national phase

Getting patents – the national route

Search

Examination

Publication

Grant

Search Search Search

Examination

Publication

Grant

Examination

Publication

Grant

Examination

Publication

Grant

United Kingdom Italy Germany Sweden

Getting patents – the “international“ route: WIPO

Examination

Grant

Examination

Grant

Examination

Grant

Examination

Grant

Publication

Search

Publication

Search

Publication

Search

Publication

Search

One WIPO Publication

One ISA Search

WIPO – Patent Cooperation Treaty (1970, in force 1978) United Kingdom Italy Germany Sweden

30 months 146 states!

Getting patents – the European Patent Convention

File translations

Validated nationally Examination

Grant Publication

EPO Publication

EPO Search

European Patent Office – The EPC 1973 (revised 2000)

Opposition (9 months)

A “bundle“ of national rights to be licensed or litigated separately in each member state. Applicant pays for as many states as needed.

EN / FR / DE

European patent application Applicant

Filing and formalities examination EPO

Search and search report together with preliminary opinion on patentability

Publication of application and search report Online access to application file and legal status information Observations by third parties possible

Public domain

Grant of European patent

Publication of patent specification

Validation in designated states

Refusal or withdrawal of application

Substantive examination

Overview of European patent grant procedure (I)

Applicant

EPO

Limitation or revocation proceedings Substantive

examination Grant of European patent

Refusal of application

Opposition proceedings

Appeal proceedings

Overview of European patent grant procedure (II)

Opposition by third parties possible

Public domain

European Patent Applications - 2011

•  Source: EPO's annual report 2011

Top technical fields in European Patent Applications - 2011

•  Source: EPO's annual report 2011

Top applicants - 2011

•  Source: EPO's annual report 2011

Granted European Patents - 2011

•  Source: EPO's annual report 2011

Granted European Patents cont'd - 2011

•  Source: EPO's annual report 2011

The cost of a European patent - Roland Berger study 2005

Today's European patent system

•  Since 1977, centralised European patent granting procedure at the European Patent Office à huge success

•  Shortcomings in the post-grant phase –  High costs for patent proprietors

•  translations, renewal fees, registers in each Member States –  Sub-optimal enforcement scheme

•  multiple litigation with risk of diverging national decisions, high costs, legal uncertainty

The European Union's patent reform 1.  European patent with unitary effect 2.  Unified Patent Court

From Community patent to Unitary patent protection (I)

•  1975: Member States sign Community Patent Convention –  never ratified

•  1989: Member States sign Agreement relating to Community patents –  ratified only by DE, DK, FR, GR, LU, NL and UK

•  2000: Commission presents proposal for a Council Regulation on the Community patent

–  failed in 2004 and 2010

From Community patent to Unitary patent protection (II)

•  December 2010: Council establishes that agreement on the Community patent cannot be attained within a reasonable period by the Union as a whole

–  25 Member States wishing to establish enhanced cooperation in the patent field address requests to the Commission

–  Commission presents proposal for a Council Decision authorising enhanced cooperation in the patent field

•  March 2011: Council adopts Decision authorising enhanced cooperation

•  April 2011: Commission presents proposals for 2 Regulations implementing enhanced cooperation –  Regulation under Art.118(1) TFEU creating unitary patent

protection –  Regulation under Art.118(2) TFEU on language arrangements

From Community patent to Unitary patent protection (III)

•  June 2011: Council agrees on a general approach on the 2 draft Regulations •  December 2011: After Trialogue (European Parliament, Council, Commission),

Parliament's Legal Affairs Committee approves first reading agreement on the 2 draft Regulations

•  29 June 2012: Political agreement at the Council. –  Deletion of Articles 6 to 8 which define the rights conferred by the

European patent with unitary effect and limitations to the rights conferred (June 2012)

–  Seat of Court of Appeal will be in Luxembourg –  Seat of central division of the Court of First Instance will be in Paris: the

central division will in addition have thematic clusters located in London (cases in the area of human necessities, chemistry and metallurgy) and Munich (cases in the area of mechanical engineering, lighting, heating, weapons and blasting)

–  The Training Center for judges will be located in Budapest –  The Patent Arbitration and Mediation Center will be located in Lisbon and

Ljubljana

Last developments

•  Opposition of the EP concerning the deletion of the so-called articles 6 to 8

•  November 2012: Council's compromize solution: reference to the protection into the national legislations. the substance of Articles 6 to 8 are transferred to the Agreement.

•  17 December 2012: adoption of the 2 regulations by the Council and the European Parliament (when necessary)

•  19 February 2013: signature of the Agreement

Unitary patent protection – Basic concept

•  Creation of new "European patent with unitary effect"

•  Definition

–  a European patent granted by the EPO under the rules and procedures of the EPC which, on request by the patent proprietor, is given unitary effect in the 25 Member States participating in enhanced cooperation

•  The European patent with unitary effect will co-exist with national patents and with classical European patents

•  Various combinations of classical EP and new EP with unitary effect –  a EP with unitary effect for the 25 participating EU Member States

together with –  a classical EP taking effect in one or more EPC Contracting

States, such as for instance ES, IT, CH, TK, NO

Main features: The unitary patent as a European patent

Appeal proceedings

Limitation/ revocation/ opposition proceedings

Refusal or withdrawal of application

Grant of European patent

Substantive examination

Search report with preliminary opinion on patentability

Filing and formalities examination

European patent application

Same grant procedure as for classic European patent

UNITARY PATENT for the territories of the 25 participating states

At the request

of the patent proprietor

The unitary patent replaces the individual effects of the European patent

in the 25 participating states

Unitary patent protection – New tasks for the EPO (I)

The participating Member States will entrust tasks to the EPO 1. Receiving and examining requests for unitary effect 2. Registering unitary effect

–  or, where the conditions for obtaining unitary effect have not been complied with, refusing requests for unitary effect

3. Publishing translations during the transitional period –  see below on translation regime

4. Setting up and maintaining a new "Register for unitary patent protection" –  containing entries re. assignment, transfer, lapse, licensing,

limitation or revocation of European patents with unitary effect

Unitary patent protection – New tasks for the EPO (II)

5. Collecting annual fees for European patents with unitary effect 6. Distributing part of the annual fees to the participating Member States 7. Administering a compensation scheme

–  reimbursement of translation costs (up to a ceiling) for applicants filing applications in an official language of the Union other than English, French or German

Challenges for the EPO, Member States and users

•  To be prepared –  Target date referred to in Regulations is January 2014!

•  New "Select Committee" of the EPOrg shall adopt implementing rules –  representatives of 25 participating Member States –  inaugural meeting to be convened once Regulations are adopted –  role of President of the EPO as in Administrative Council

•  Critical is the overall financial sustainability of new system –  costs for EPO: new tasks, compensation scheme –  setting the level of annual fees

•  only broad criteria are laid down in Regulations •  must be set low enough to be attractive to users but high

enough to ensure cross-subsidy of European patent grant procedure at the EPO

–  distribution to Member States

Unitary patent protection – Language arrangements

•  No translation requirement after grant (beyond Art. 14(6) EPC)

•  Patent translate

–  EPO / Google translation service optimised for patent documents

•  Translation in case of dispute, at the request of a court or of an alleged infringer, cost borne by the patent proprietor

•  Transitional measures: during a period of up to 12 years

–  where the language of proceedings at the EPO is French or German: translation of the EP into English

–  where the language of proceedings at the EPO is English: translation of the EP into any official language of the Union

•  Compensation scheme

Machine Translation System

•  Machine Translation system will be a key element in the frame of the unitary patent: patent applications and granted patents will be available free of charge available in any EU language

•  MoU together with Google (April 2011) - free of charge and non exclusive:

–  Objective in 2014-15: from EPO's languages (EN, FR, DE) to any language of the Member States of the EPOrg (and vice versa)

–  Automatic translation from KO, CI, JP and RU to the EPO's languages: ensure that European companies are aware of the state of the art when developing business in these emergent countries

–  February 2012: first batch of languages: from IT, ES, PT, FR, DE and SE to EN (and vice versa)

–  Next batch: early 2013 (DK, NL, FI, GR and HU)

Risks

•  Spain and Italy have brought before the CJEU actions for annulment of the Council's Decision to authorise enhanced cooperation

–  12 December 2012: Opinion of the Advocate General

–  similar actions are likely to be brought before the CJEU against the Regulation on unitary patent protection (once adopted)

Unified Patent Court – Main features (I)

1.  Decentralised Court of First Instance with local, regional and central divisions located in the Member States

2.  Common Court of Appeal 3.  Common Registry with local sub-registries 4.  Reference to the CJEU for preliminary rulings whenever a question of

Union law requires interpretation 5.  Internationally composed panels

•  with (mostly) 1 technically qualified judge 6. Judges appointed by Member States on the basis of a list prepared by

an independent Committee composed of practitioners 7. Jurisdiction for both European patents and European patents with

unitary effect 8. Competence to hear i.a. infringement actions, revocation actions and

counterclaims for revocation

Unified Patent Court – Main features (II)

9. Discretion for local and regional divisions to either deal themselves with counterclaims for revocation or refer such counterclaims to the central division (bifurcation)

10. Possibility for opt-out and choice of forum during a 7-year transitional period (extendable)

11. Entry into force once 13 Member States will have ratified –  including DE, FR and UK

12. Revision clause: Based on user consultation and an opinion of the UPC, the Administrative Committee may revise the Agreement to improve the functioning of the UPC

13. Court fees: fixed and value-based fees 14. Preliminary draft for the UPC's Rules of Procedure available

Advantages of the new system

•  For inventors –  protection in one single step for the 25 states currently

participating –  significant cost savings (translation, validation, administration) –  simplified validation procedure (instead of up to 25 different

procedures) –  simplified and more cost-efficient renewal procedure –  increased legal certainty due to uniform litigation system

•  For Europe –  optimal protection in the participating states as a whole –  better framework conditions for innovative companies and

organisations –  simplified European protection mechanism for companies from

outside Europe –  improved competitiveness of the European patent system

Consequences for individual applicants, SMEs and PROs

•  Reduction of the cost for protecting the invention: –  translation (compensation scheme) –  centralisation of the administration of the patent, –  special rate of the renewal fee for SMEs, Individual applicant and

PROs?

•  Flexibility: the existing routes (national, European) will be maintained: the applicant will be free to choose the more appropriate one for his business

•  Unique decision which could be enforced on the territory of all the Participating Member States

•  Alternative dispute resolutions: arbitration, mediation

Any further question:

jgal@epo.org