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.