Monday, 23 December 2013

Denmark to vote on unitary patent in referendum on May, 25th

According to the Copenhagen post, Denmark will definitely hold a referendum before joining the unified patent court. The unitary patent requires 13 states to ratify the Agreement on a Unified Patent Court. Denmark is one of the 25 countries that is currently eligible to ratify.

Thursday, 19 December 2013

Select Committee discusses compensation scheme for translation costs

At the Epo website there is a short report of the last meeting of the Select Committee on 10 and 11 December 2013.  At the EPO the select committee sets the rules of procedure for handling the unitary patent.

One of the discussed items is the compensation scheme for costs for translations. This scheme is introduced by article 5 of regulation 1260/2012. I can imagine that some if its provisions will cause the EPO some work to implement right.

Wednesday, 11 December 2013

Level of Renewal fees not expected soon

One of the open question regarding the unitary patent is the level of the fees. Of immediate concern is the level of the renewal fee. After a unitary patent has been granted, one does not pay individual renewals for all participating states, but instead one central renewal fee, to be paid to EPO.

The level of the renewal fee will determine where the break-even point will be, cost-wise, between classic validation and a unitary patent.

Monday, 23 September 2013

Austria ratifies Agreement on a Unified Patent Court

On 07.08.2013 Austria ratified the Agreement on a Unified Patent Court. Although 25 EU countries had already signed the Agreement on a Unified Patent Court, Austria is now the first country to already ratify the agreement.

For the unitary patent to enter into force, 13 countries need to ratify, including Germany, France and the United Kingdom. 12 more countries to go!

Thursday, 13 June 2013

More translations needed for a unitary patent?

In my last post I noted that the unitary patent requires fewer translations than regular European validations. During the transitory period, this may not be true.

Consider the following example. You have a granted European patent application with an English text.  The patent has 20 pages of specification and 2 more pages of claims. You only need patent protection in France, German, and the United Kingdom.  You are still in the transitory period.

Without a unitary patent, you do not require any further translation than already imposed by the EPO. This is a result of the London Agreement. This means that when your application gets to grant you need to translate the claims into two official languages. In total you need 2+2=4 pages of translation.

If you decide to obtain protection in these three countries through a unitary patent you need to provide a full translation of the patent as well.  You still need to translate 4 pages for the claims, but in addition 22 pages for a full translation in another EU language are needed. In total you need 22+2+2=26 of translation.

Going through the unitary patent route instead of the conventional route gives a more than 6 fold increase in translation requirements.

Even if you extend the number of countries in which you wish protection with say, Denmark, the Netherlands, and Sweden, the regular system still requires fewer translations. To validate in these countries, I need only translate the claims, so the score becomes, 26 pages for unitary versus 10 pages for conventional European patent.

To be fair, there are many European countries that would require a full translation in this example under the old system but will not for in the unitary system, say Portugal, Belgium, or Austria. So adding these countries to the list would swing the advantage to the unitary patent.

Validation only in the United Kingdom, Germany, France and the Netherlands are not uncommon. For such a limited list of countries the short term validation costs increase significantly. This may impact the decision to go for unitary effect or not. 

Note, that this doesn't take into account other cost factors, in particular renewal fees. Moreover, the additional translation imposed by the transitory period has no legal effect, so some may be tempted to skimp on its quality.

Monday, 10 June 2013

Overview of translation requirements for the unitary patent

One of the advantages of the unitary patent is a reduction in translation requirements. Below we will give an overview of the translations you may encounter when applying for a unitary patent.

Monday, 3 June 2013

Spain's arguments against unitary patent published

Last Friday the pleas were published that Spain raised in the annulment actions C-146/13 and C-147/13 aimed at the EU regulations for the Unitary Patent.

Wednesday, 8 May 2013

Referendum on Unified Patent Court in Ireland

According to the EUobserver, junior minister Sean Sherlock has confirmed that Ireland will have to hold a referendum before ratifying the agreement on a Unified Patent Court. TheJournal notes that Ireland's Supreme Court requires a referendum for any transfer of judicial powers to an international body.

The Unified Patent Court will entail such a transfer. Apart from unitary patents, the unified patent court will also be competent for 'regular' European Patents, i.e., without unitary effect. Once a European Patent has been granted it has the same effect as a national patent in the contracting states, including Ireland.

Thursday, 2 May 2013

Can Spain or Italy change their mind, and join the Unitary patent?

At the moment, unitary patents will not be valid for Spain and Italy. Could these countries still change their minds?

Tuesday, 30 April 2013

Comptentence of the Italian local division of the Unified Patent Court

As pointed out earlier unitary patents will not cover Italy but Italy did sign the agreement on the UPC.

The UPC will be competent both for classical EP bundle patents and for EP unitary patents. I think this means that any court of the UPC may hear, say, an action for infringement in Italy (assuming the court is competent) and that conversely, the Italian court may revoke your patent for all states.

This could lead to a curious case. Suppose I only have a unitary patent, and that an Italian company infringes my unitary patent in Germany. As the patent owner, I  then sue with the Italian local division of the UPC. The Italian division could then revoke the unitary patent for the whole of the EU, even though the patent is not even valid in Italy.

Friday, 26 April 2013

Wednesday, 24 April 2013

Could you get a unitary patent from currently pending patent applications?

Will unitary effect also be available to existing patent applications currently pending at the EPO? A recent commenter raised this question, along with some good arguments why the answer ought to be 'No'.

I'm fairly certain however that existing patent applications will be able to benefit from the unitary patent option.

Monday, 22 April 2013

The Malta problem for requesting unitary effect

Over at IPcopy an interesting problem regarding the request for unitary effect was signaled. It appears that under some interpretation of regulation 1257/2012, unitary effect is not available for any European patent application that was filed before 1 March 2007.

The argument runs as follows:  Article 3(1) of regulation 1257/2012 requires for unitary effect "a European patent granted with the same set of claims in respect of all the participating Member States". The same article further state that `A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.´

Tuesday, 16 April 2013

Court of Justice rejects case of Spain and Italy against enhanced cooperation

Underlying the unitary patent is Council Decision 2011/167/EU, which allows the so-called 'enhanced cooperation'. The enhanced cooperation allowed the EU members to create a unitary patent system without Spain and Italy. Enhanced cooperation is not the norm at EU. It is much preferred that the parties come to an agreement that will hold in all EU member states.

Monday, 8 April 2013

Reimbursement system (slightly) favors English

Regulation 1260/2012 of the unitary patent provides reimbursement of all translation costs (up to a ceiling) for certain applicants of European patents. According to the preamble of the regulation the reimbursements go beyond the fee reductions that are currently in place at the EPO. The new reimbursements will be administered by the EPO. We don't know how this will work. Possibly we will have to submit receipts of translation services in order to be eligible.

Friday, 5 April 2013

Reimbursement of translation costs

European patent applications may be filed in any language. Literally any language at all. Since, not all Examiner are fluent in, say, Cantonese you are required to file a translation into one of the official EPO languages too.

Not all languages of the EPO member states are official languages of the EPO (English, German and French)--in fact most are not. To compensate those applicants who happen to live in a country which does not speak an official EPO language there is a fee reduction for those applicants (R.6, A.14(4) EPC).

On the coverage of the Unitary Patent

As many of you will know, Regulation (EU) No. 1257/2012 provides the basis for a patent proprietor to apply for unitary effect of a European Patent Application, thereby obtaining a "Unitary Patent".

Moreover, Art. 9.1(g) of the Regulation tells us that, in order to do so, the proprietor needs to file a request for the unitary effect of the European Patent at the EPO within one month of the date of publication of the mention of the grant in the European Patent Bulletin.

A question which may arise here is to which states the unitary effect extends. Does it extend to all so-called Participating Member States of the Regulation (i.e., all EU states except Spain and Italy)?

Wednesday, 3 April 2013

Reading List for Unitary Patents

The first challenge when reading up on the unitary patent and unified patent court is to find all the primary documents. Personally, I like to be able get these documents from the source itself, it that is at all possible.

Previously the primary source for all official law and regulations relating to European patents is the European Patent Office itself. Post grant some may be found at the EPO, e.g. for oppositions, and some may be found in national law, e.g., for national validations.

Friday, 29 March 2013

Voting at the Select Committee

The member states to the unitary patent have set up a Select Committee of the Administrative Council of the EPO.

First point on the agenda is the rules of procedure. The regulations of the council of the EU do not provide much guidance on this point except to make explicit that decisions shall be taken in ´accordance with the rules laid down in Article 35(2) of the EPC´.

Article 35 EPC gives the voting rules of the Administrative Council. Decision according to paragraph 1 require a simple majority, those according to paragraph 2 a majority of three-quarters, and those according to paragraph 3 require unanimity.

I am not really sure what in ´accordance with the rules laid down in Article 35(2) of the EPC´ means. Does it mean that all decision of the Select Committee require a 3/4 majority or only those decision that are analogous to the types of decisions given in A.35(2) EPC? The latter includes by the way the currently important points: fees and implementing regulations. 

Thursday, 28 March 2013

First meeting of the Select Committee

One of the open questions regarding the unitary patent is related to its cost. Although, the regulations give a number of constraints regarding the fees, the actual fee levels aren't know yet.

The level of the renewal fees for a unitary patent and how the incoming funds will be divided over the participating states will be determined by the so-called ‘Select Committee’.

The EPO has announced that the select committee had its first meeting on Wednesday March 20, 2013 in Munich.

For not the Select Committee is discussing its rules of procedure. I noticed that the Select Committee did not show up yet in EPO's page of the Administrative Council.