SARAVANAN ASARAVANAN APhD CandidatePhD Candidate

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Through three main channels Patent application filed directly with each country

(national filings) International Patent application under PCT Regional patent through EPO (European Patent)

How to file PCT and EPO applications? Unification- Current European Patent is not unified

Wide variety of national laws and regulation apply Two proposals to advance EP system within EU

Fragmented European patent system has negative impact on Innovation, growth and the competitiveness of European

business

They have to at par with USPTO and JPO Over 40yrs EU members- several conferences and

international agreements Aimed at creating Unitary Patent System valid throughout

European countries EP Organization outcome of EPC was significant milestone

Cost and Uncertainty Regarding European Patents High cost in all 27 EU members and 38 EPC countries

Classical EP- Renewal fees to national offices is 15 times higher than USPTO

US & Japan- single patent application

Unlike US &Japan- after grant of EP inventor must validate the patent in EU States

Process of validating- costly & difficult For eg- total cost of validating EP in France, Germany & UK-

680 Euros In 13 countries- 12,500 Euros & in all 27 countries- 32,000

Euros Infringement and revocation proceeding at national

courts Different interpretations of EP law

Several issues on Judicial Enforceability National patent litigation makes multiple jurisdiction Increases litigation cost SMEs is prone to this litigation cost and risky multi-forum

litigation

Absence of a central patent court EP is litigated individually in each country where patent is

in force Parallel litigation of same patent in different national

courts

Which all affects the efficiency of the EPO

Due to above stated issues, there is strong desire for Unitary Patent System throughout Europe

History: The Paris Convention, 1884

1st international treaty address IPR across international borders

Modern-day multinational protection for IP First attempt to harmonize patent law throughout Europe

Rights of N.T

Right to priority

Shortcoming- member states did not make any significant concessions regarding harmonizing substantive patent law

1) The European Coal and Steel Community ) The European Coal and Steel Community Treaty- 1952:Treaty- 1952:

After WW II- necessity to reconstruct EU economy Aim- “contribute, through the common market for coal

and steel, the economic expansion, growth of employment and a rising standard of living”

Ensuring free movement of products & prohibit restrictive trade practices

Evidences- early awareness by EU leaders that peace, economic expansion, employment, IP protection and free flow of goods

2) The European Economic Community Treaty – 2) The European Economic Community Treaty – 1958:1958:

Harmonious development of economic activities

Continuous and balanced expansion

Increase in stability , and accelerated raising of the std of living

Due to success of EEC, European countries decided to harmonize their economic activities throughout the Europe

The EU was established by this treaty, signed on 7th Feb 1992

Developed, Single currency Established freedom of movement of goods,

services, people and money b/w member states Promotion of scientific and technology advances

UPS has ensured all the objectives later

After establishment of EEC, the council initiated 1st major attempt to harmonize substantive patent law throughout EU

In 1963, 13 member countries negotiated the Convention on the Unification of Certain Points of Substantive Law on Patents for Invention

Objectives: To harmonize substantive patent laws- Creation of international patent Assist industry and inventors Promote technical progress

1st significant effort by European countries to harmonize patent law

Opened for signature on 27th Nov 1963 and did not EIF until 1st Aug 1980- ratified by only 8 countries and 13 countries parties to it

Strasbourg Treaty is the - Blueprint for EPC in 1973

EPC is another notable effort to created European patent system

Currently 38 European countries are parties to it Include all 27 EU members and 11 countries not in EU

Lead to creation of EP Organization Authority to grant European patents Introduced standard rules governing European Patents

Inventor files single patent application with EPO

Inventor can validate the patent in each contracting state separately

EPC established uniform requirements for filing, prosecution, opposition and appeal of EPO decisions

Foundation for eventual unification of substantive patent law throughout Europe

Shortcoming- EPO did not replace national patent offices

EPC member states not obligated to amend their national patent laws to conform to EPC patent provisions

EPC members retained authority over European patents after validation Determine patent validity, post grant infringement, damages,

enforceability

Further attempts of unification of EU patent system struggled to build upon the success of this unifying treaty

9 countries signed this CPC but it never CIF

Main goal: To created unitary and autonomous European patent Single unitary and autonomous protection right

It is developed in conjunction with EPC and EEC

If enacted- patents issued by EPO automatically effect throughout entire European

Prepared uniform rules governing unitary and autonomous effect of EP

Similar to EPC, this CPC also not require member states to change their national patent laws

Luxembourg Conference (1985), EEC, EC and other international organization were eager to conclude the CPC

To this end, CPS was signed by all EEC members

Due to ‘constitutional and political problems in some member States’ only 7 countries ratified CPC But never CIF

Main obstacle for the ratification is Translation provisions

CPC is an another bold leap forward for creating UPS But suffered the same fate

Another initiative impact patent applications throughout the globe

Began in the late 1960s

Signed in Washington, DC on 19th June 1970 by 20 countries initially

EIF on 24th Jan 1978 and all EEC members are party to the PCT

Total 146 (June 2012) As on now……

PCT allows inventor to file a single international patent application

Member states to accept PCT applications as national applications

PCT doest not interfere with granting or post granting validity of patents, infringement and enforceability

PCT is an imp milestone in international patent co-operation

But, it had only little impact on advancement of community patent in Europe

Because, EU had already established a regional patent process to file single patent application with the EPO

Protocol on the Statute 14yrs after CPC, EC met once again in Luxembourg

regarding community patent

This agreement amended CPC by incorporating new system of litigation concerning the validity, effects and infringement of Community patents

Supplement with three protocols Protocol on settlement of Litigation

Create CP courts of 1st and 2nd instance Also to establish Common Appeal Court with an independent legal

personality Protocol on Privileges and Immunities

This agreement also never come into force, because 2 main reasons, The excessive cost to applicants – for translation

to official language of every EEC country Complex judicial system, which would declare CP

invalid and that decision would effect throughout the EC

Influenced the harmonization of European substantive patent law

Member States to ‘implement in their law more extensive protection’

Term of patent- 20yrs

No discrimination based on place of invention and field of technology

All EU members are parties to the TRIPS Obligated to ensure their patent laws are in compliance

Shortcoming- only minimum protection and no uniform system of protection

EPLA- proposed by EP Organization sub-group of the working party on litigation

It is an optional protocol to EPC

Aim- ‘remedy the shortcomings of the present purely national litigation system of EP’

EPLA would establish a ‘European Patent Court’ Deal with infringement and revocation action issued by EPO

European Patent Court: CFI A central division Number of Regional Divisions Court of Appeal

European Union’s Lisbon Strategy- 2000:European Union’s Lisbon Strategy- 2000: Lack of CP was subject to EC’s meeting in March 2000,

Lisbon

EC called for creation of Community-wide patent protection by end of 2001

Based on the decision- European commission proposed an EU regulation for a Community patent in August 2000 Now EU Unitary Patent Regulation (UPR)

The proposed EU- UPR is founded on the CPC and 1989 Agreement

In 2003 several revisions to arrive at a compromise

But EU working group failed to reach on agreement on translation claims

Negotiation regarding the proposed regulation stalled and a final agreement was never reached

On 3rd April 2007 European Commission adopted Communication Enhancing the Patent System in Europe Vision to make EU Unitary patent a reality To improve European patent litigation system

Purpose is to reinvigorate Patent reform debate and suggest new avenues for UPS UPC

The convention of the Grant of European Patents (London Agreement) was an initiative of an EPO This was concluded on 17th Oct 2000 but did not EIF till

May 1, 2008

Out of 27 EU members States, Only 12 EU members are parties to it 13 others are agreed either dispense entirely with

translation provision Italy and Spain are not parties to it

Both opposed because they want to file patent applications in their national language

Three Proposals Two regulations

(Unitary Patent Protection) and one Agreement (Unitary Patent Court) 1st : EU enhanced

cooperation procedures- to pass EU Regulation on Unitary Patent Protection

2nd : Unified Patent Court (Draft) Agreement

The Regulations entered into force on 20 January 2013, and are applicable from 1 January 2014, or

The date of EIF of the UPC Agreement whichever is the later

It will enter into force on 1 January 2014 or after the deposit of the 13th instrument of

ratification or accession

On 4th Dec 2009, Council of EU adopted this proposed regulation

Patent protection in all EU countries by submitting single patent application to the EPO

The procedure of examining, criteria and others rules are same as in EPC

The difference is post-grant phase

Problems associated with translation regime

After long discussion and considering various options European Commission adopted proposal for translation regime

Which chose English, French and German as an official languages of EPO If submitted in any other languages- Application will be translated into one of

the official languages

Majority of EU members supported this proposal but Italy and Spain objected it

To overcome this stalemate- EC at request of 12 member states use of EU enhanced cooperation legislative procedure Which allows for approval of EU legislation without consent

of all 27 members Laterly other 13 additional EU members also joined

On 10th March 2011, council adopted a decision to create UPP

Italy and Spain filed complain with CJEU challenging the use of enhanced cooperation procedure Seeking to annul the decision of EU council

If the proposal becomes law, than cost of obtain EU-Wide patent will decrease from around 32,000 Euros to less than 2,500 Euros During transition period- 680 Euros

EU Patent Package has not yet come into force

Expected to be ratified by all the contracting member states sometime in 2015 or 2016

There will be significant changes to European Patent System if it does come into force

Unitary patent is a "European patent with unitary effect“

The unitary patent has unitary character with unitary effect for the territory of the 25 participating states

Post-grant registration of unitary effect on request of the patentee

Single EPC procedure for European and "unitary patents"

Application and examination procedure will remain unchanged

Will be limited, transferred or revoked in all participating member states

EPO is solely responsible for granting UP Licensing, collection of renewal fees, disbursement of fees

Application and examination procedure for Unitary Patents are same as for European patents (until Grant of patent)

The main diff b/w UP and EP will be in the Post-Grant phase.

Registering a unitary patent:Registering a unitary patent:

File a unitary patent application- applicant will need to file for EP with EPO and register for unitary effect during post-grant phase of prosecution

Basic requirements Patent proprietor has to file the request for unitary

patent protection with the EPO in writing in the language of proceedings (English, French or German) no later than one month after the mention of the grant is

published

Unitary effect can only be requested for European patents which were granted with the same set of claims in respect of all the participating states

Translations only have to be filed during a transitional period (Upto 12 years)

Effects of the registration Unitary patent does not revoke or replace

European Patents or national patents within the member states

Current member states - 25

Italy (IT) and Spain (ES) intend not to participate in the Unitary Patent protection (however Italy has signed the Unified Court Agreement)

EPO members outside EU are not within this agreement Switzerland, Turkey, Norway and Iceland

One-stop-shop: centralized post-grant administration by EPO requests for unitary effect Register for unitary patent protection receiving/registering statements on licenses of

rights collection/distribution single renewal fees reception/publication of translations during

transitional period administration of compensation scheme for

translation costs

Builds on EPO language regime (Art 14(6) EPC) Reliance on EPO machine translations

Transitional provisions

Compensation scheme for the filing of applications in one of the official EU languages that is not an EPO official language Reimbursement: EU based SMEs, natural persons,

non-profit organizations, Universities, public research organizations In any official language other than those three- cost

reimbursed

UP will automatically be valid for all participating EU states.

Single Patent application and avoid multiple litigation

Less cost effective Encourage SMEs, NPOs, Universities

Easy maintenance of a Unitary patent by paying all annuities to EPO. Reduction of the renewal fees

According to the European Commission, a Unitary Patent may cost just € 4,725 Euro compared to an average of € 36,000 needed today

No further translations will be required beyond those required by the EPO before grant.

Transitional provisions, however, will apply until high quality machine translations are available

Difficult to predict the impact

The integration with other means of patenting UPS will not change the current manner of filing and also PCT

application

The cost of obtaining a unitary patent Welcome change-

The effect of national laws on the enforcement of UP protection Art 69 of EPC interpreted according to national precedent Change in the structure of court system- CFI, CoA Greatest contrast b/w claim interpretation standards in

Europe is demonstrated by diff b/w English and German approaches English courts construe – Peripheral claiming (plain meaning) German courts- central claiming (narrow scope of protection)

Issues of prior user rights, and compulsory licenses are remain fragmented

The possibility of forum shopping Multinational patent litigation Arbitration proceedings

International effect of licensing Under EP system- licensing is difficult By filing UP application owner may escape ongoing

maintenance fee

US applicants will have an effect on future filings and proceedings

Predicted Effect:Predicted Effect: US applicants will have another tool for protect

their IP in EU

UPS nail for peripheral claim interpretation US practitioners need to become more familiar with

this interpretation

Broader protection may lead to more litigation threats

EPO Patent filing statistics in 2013 By EPO members States– 35% USA- 24.5% Japan- 19.7%

Data of EPO Biotechnology patents from non EU countries are stronger

Classical EP- EC Directive 98/44/EC Legal protection of biotechnological inventions

Two aspects- bifurcation and injunction create abuse of the UPS Patent infringement and validity are heard separately

Injunction – patent assertion entities (PAEs) patent trolls Negotiating power to force excessive settlements from

other companies

Proposed UPC do not provide sufficient guidelines on such issues PAE cases are already growing battlefield in USA and EU

Impact of PAE on BT industry is on functional claims

Forum shopping may influence such type of litigation

Overall, UPS will likely have a positive impact on applicants

Negative aspect also logically follow

European businesses are at disadvantage in global market because of fragmented patent system

The possibility of UPS and UPC raises many important questions. Will the unitary patent be uniformly enforced? Will the Europeans give full faith and credit to their

neighbors? Will the new regime decrease costs?

We will have to wait for the better times!We will have to wait for the better times!