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

Parole d’expert
Le brevet unitaire : un nouvel outil
pour les inventeurs européens ?
Jean-Luc GAL, European Patent Office Brussels Bureau
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
Autonomy
•  Second largest intergovernmental
institution in Europe
•  Not an EU institution
•  Self-financing, i.e. revenue
from fees covers operating
and capital expenditure
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.
Structure of the European Patent Organisation
European Patent Organisation
European Patent Office
Administrative Council
The executive body
The legislative body
§  responsible for examining
patent applications
§  made up of delegates
from the member states
§  supervises the activities
of the Office
§  has a specific legislative
function
38 member states
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
European patent applications and patents
can also be extended at the applicant's
request to the following states:
Bosnia-Herzegovina • Montenegro
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
United Kingdom
Italy
Germany
Sweden
Search
Search
Search
Search
Publication
Publication
Publication
Publication
Examination
Examination
Examination
Examination
Grant
Grant
Grant
Grant
Getting patents – the “international“ route: WIPO
WIPO – Patent Cooperation Treaty (1970, in force 1978)
United Kingdom
Italy
Germany
Sweden
Search
One ISA
Search
Search
Search
Search
One WIPO
Publication
Publication
Publication
Publication
146 states!
30 months
Publication
Examination
Examination
Examination
Examination
Grant
Grant
Grant
Grant
Getting patents – the European Patent Convention
EN / FR / DE
European Patent Office – The EPC 1973 (revised 2000)
EPO
Search
A “bundle“ of national
rights to be licensed or
litigated separately in
each member state.
EPO
Publication
Applicant pays for as
many states as needed.
Validated
nationally
Examination
Grant
Publication
Opposition
(9 months)
File
translations
Overview of European patent grant procedure (I)
Applicant
European
patent
application
EPO
Filing and
formalities
examination
Search and search
report together
with preliminary
opinion on patentability
Refusal or
withdrawal
of application
Validation in
designated
states
Substantive
examination
Grant of
European
patent
Publication of application and search report
Public
domain
Online access to application file and
legal status information
Observations by third parties possible
Publication
of patent
specification
Overview of European patent grant procedure (II)
Applicant
EPO
Refusal of
application
Substantive
examination
Grant of
European
patent
Limitation or
revocation
proceedings
Opposition
proceedings
Public
domain
Opposition by
third parties
possible
Appeal
proceedings
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
Same grant procedure as for classic European patent
Appeal
proceedings
Refusal or
withdrawal
of
application
European
patent
application
Limitation/
revocation/
opposition
proceedings
UNITARY PATENT
Filing and
formalities
examination
Search report
with preliminary
opinion on
patentability
Substantive
examination
Grant of
European
patent
At the
request
of the patent
proprietor
for the territories
of the 25
participating states
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:
[email protected]