2014-09-10 1Protecting your knowledge and creativity, the basis of your success.Protecting your knowledge and creativity, the basis of your success.

Patents in European Unionnational, European, unitary

Presentation for Ukrainian Center for Innovation

and Patent Information Services

Kyiv - Warsaw, 2014-09-10

Jakub Sielewiesiuk

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Overview

1. National patents. 2. European patents

» Legal frame for European patents – EPC.

» Procedure from filing to grant.

» Procedure after grant – validation.

» Arising problems.

3. Possible solution: unitary patent.

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National patents

Each country has its own patents office. It is possible to file nationally and get a

patents in a given country. „Normal” conditions apply: national law, local

official language, local representative etc. local patent local courts decide on infringement.

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Need for improvement

National route with numerous parallel grant proceedings is time consuming, troublesome and expensive.

Would be nice to have a better way to get a patent in Europe, especially in view of free, unitary market within European Union.

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The European PatentConvention (EPC)

Convention on the Grant of European Patents,– signed on 5 October 1973 in Munich DE;

– is an international treaty within the meaning of Vienna Convention on the Law of Treaties (1969)

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EPC Contracting States

As of 10 September 2014:

38 member states 2 extension states:

– BA (Bosnia and Herzegovina), ME (Montenegro)

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European patent - basics

EPC provides:– one centralized procedure from filing to grant,

– a few post-grant procedures:» central opposition

» central limitation/revocation (on request of patentee)

(having ab initio effect, in all Contracting States).

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EPC – grant procedure

European patent applications are prosecuted by the European Patent Office, EPO.

EPO has offices in:– Munich (seat and headquarters),

– The Hague,

– Berlin

and supplementary offices in Vienna and Brussels.

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EPC – grant procedure

EPO official languages are:– English

– French

– German It is possible to file in ANY language

(Ukrainian, Russian, Latin…), but translation into English, French or German must follow.

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EPC – grant procedure- representation

Companies/parties from countries other than the 38 EPC contracting states – must act through a representative – European patent attorney.

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EPC – grant procedure- representation

You may choose your European attorney from any of these 38 countries.

Practical remark:– Representatives from „new/CEE” countries have

lower prices (Poland, Czech Republic, Romania, Baltic States etc.)

– Representatives from „old/Western” countries – have more experience (DE, FR, UK, NL…)

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EPC – grant procedure- advantages

Centralised grant procedure– relatively fast

– relatively cheap (10-15.000 euro)

– reliable (EPO is one of the best searching and examining authorities worldwide;

highly skilled examiners thorough examination vs. prior art strong patent!)

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EPC– granted European patent

After grant the European patent– is published in the language of proceedings

(EN/FR/DE) with claims translated into the other two official languages;

– in order to take effect in selected Contracting States the patent has to be validated in those States.

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EPC– validation

In the validation procedure, the European patent is transformed into a bundle of national patents in selected Contracting States.

These patents are subject to national law. In particular, disputes arising from such patents are governed by national law.

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EPC– validation

In most Contracting States, validation of European patent requires:– appointing a local patent attorney,

– filing a translation of the whole patent as granted into the official language of the State,

– paying national official fees.

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Validation- disadvantages

So… we are back in the national systems, having paid a lot and having a bundle

of independent national patents:– rights resulting from patent not necessary the

same in each country,– independent court proceedings in case of

infringement...– ...possibly with different outcome!

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Remedies – London Agreement

- reduce translation cost

Improvement under London Agreement:– no translation at all – patent valid automatically:

France, Germany, Ireland, Lichtenstein, Luxembourg, Monaco, Switzerland, UK;

– translation of claims only: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Macedonia, Netherlands, Sweden, Slovenia;

...full translation still required in all other countries (including Poland)...

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Remedies – unitary patent(not yet in force!)

In view of the common market in EU, it is important to improve the European patent system and make it more competitive and attractive:– turn European patent into a unitary right,

– form centralised Patent Court.

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Remedies – unitary patent

European patent should form a unitary right. - applications filed with the EPO and patents

granted by the EPO based on the EPC; - unitary effect to be requested within one month

from grant; - in long term: no translations after grant required

(in 12 years machine translation should be good enough); before that – translation into English.

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Remedies– European Patent Court

Another important institution associated with European patent as a unitary right should be centralised court – Unitary Patent Court– competent in disputes resulting from European

patents

– and whose judgements should be binding on the whole territory in questuion.

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European unitary patent- territories

European unitary patent – will have the effect in countries, who:

- agreed to accept unitary patent regulations; - agreed to accept and implement Unitary Patent Court

regulations.

In practice: 25 of 28 EU countries (ES, IT, PL – outside the system so far).

Ratifications pending in 25 EU countries.

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Thank you!