Tuesday, November 22, 2016 EPO ready for unitary patent

Waiting for the UK

According to a statement of the select committee the EPO has completed the legal preparations for the Unitary Patent. In particular, they have approved how the fees coming from the unitary patent are to be distributed among the participating member states.

At present, it doesn't look like many fees will be rolling in any time soon though. When the select committee will have their next meeting will depend on 'the development of the question of the entry into force of the UPP/UPC at the political level, within the framework of the European Union'. As long as the UK does not ratify the Agreement on a unified patent court, the unitary patent cannot start. The UK may or may not do so, but no news is forthcoming from that front. At the latest the select committee will reconvene in March 2017.


Photo by Unsplash via Pixabay, under a CC0 license; no changes were made to the photo.

Wednesday, June 08, 2016 EPO produces unitary effect simulation tool

The EPO has created a plug-in for their online  filing software that simulates the acts you would take to request unitary effect.
 
The procedure to get a unitary patent is almost the same as the current procedure to get a  'classical' European patent. Only after the decision to grant will the two procedures differ. Whereas a classical European patent needs validation in each country in which it is to remain valid, a unitary patent requires that the applicant request unitary effect with the EPO. 

 Requesting unitary effect will be possible using the online filing software that are currently used by most patent firms to interact with the EPO. As the time limit on requesting unitary effect is quite short, it is important that the requesting is easy to do and will not often go wrong. This should be possible as requesting unitary effect does not require a fee, and has few formalities.

Using the  demo software, a user can simulate the acts for requesting unitary effect. Of course any action in the demo software will have no legal effect. Only when the unitary effect has come into effect will the operational version of the software be made available.


The unitary patent demo software can be downloaded here.

Photo 'free wheelin' by Mark Ittleman via Flickr under a CC-By license; image was cropped and edited.

Thursday, December 24, 2015 Battistelli, "ready to deliver the unitary patent"

The European Patent Office (EPO) appears to have completed all rules surrounding the unitary patent. According to the EPO they formalized: implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states.

Benoît Battistelli president of the EPO said, "We are now legally, technically and operationally ready to deliver the unitary patent."

In the unitary patent system the EPO will be responsible for granting unitary patents. The granting of unitary patents is a new task that comes in addition to their present task of granting European patents. A key difference between the current European patents and unitary patents is that a European patent needs to be maintained separately for each country in which patent protection is desired, but a unitary patent has a fixed list of countries in which it is valid. The EPO will also administrate the unitary patent after its grant and collect and distribute the renewal fees for the unitary patent.

That the EPO's completed its preparations is of course good news for the unitary patent, but this was not one of the legal roadblocks. There still remains the necessity of national ratifications of the unified patent court; in particular the UK's and Germany's ratification.

Photo "Another Tough Puzzle, solved" by ToddonFlickr obtained via Flickr  under a  CC-By license

Thursday, November 05, 2015 Reading Material for Unitary Patent: Articles, Rules and drafts

Not much case law for UPC yet

As the unified patent court and the EPO are preparing for the start of the unitary patent, the amount of rules is increasing. At the moment, I count ten documents with articles and rules that will govern the unitary patent and unified patent court. In this post I'll try to make a comprehensive list of the primary sources on the unitary patent. 

EU level regulations

At the EU level there are two regulations. These regulation dating from 2012 establish among other things the unitary effect, applicable law, and translations agreements. Below I have also included the decision from 2011 that allowed is the unitary patent to proceed without Spain and Italy. (Although Italy has joined later after all.)

Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection.
The document is available at Eur-lex.
Status: final

Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.
The document is available at Eur-Lex.
Status: final

2011/167/EU: Council Decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection.
The document is available at Eur-Lex.
Status: final

Unified Patent Court

The unified patent court is established in the Agreement on a Unified Patent Court. This agreement between EU members has been signed by most of EU member states but is not yet fully ratified. The agreement established the unified patent court (UPC) and its competency. Detailed rules for procedures at the UPC are in a semi-final draft, but cannot be established before the court has been established. A proposal for court fees is available. Recently a protocol was created for the agreement which allows some provision of the agreement to enter into force before the rest of the agreement.

Agreement on a Unified Patent Court
The document is available at the website of the Council of the European Union.
Status: Ratified by 8 member states, awaits the ratification by 5 more states which must include Germany and the United Kingdom.

Preliminary set of provisions for the Rules of Procedure (“Rules”) of the Unified Patent Court
The document is available at the website of the unified patent court.
Status: 18th draft, Adopted by the Preparatory Committee on 19 October 2015. Must be adopted by the Administrative Committee of the UPC, which does not exist yet.

Rules on Court fees and recoverable costs
The document is available at the website of the unified patent court. 
Status: Draft (Consultation Document)

Protocol to the Agreement on a Unified Patent Court on provisional application
The document is available at the website of the unified patent court.
Status: Signed by 7 participating member states, does not enter into force until 13 States have informed the depositary that they have received parliamentary approval for the UPC

EPO

The legal basis for the unitary patent is found in the EPC (Articles 142-149a).

European Patent Convention
The document is available (pdf) at the website of the EPO.
Status: final

Draft Rules 1–24 relating to unitary patent protection
The document is available (pdf) at the documentation page at the EPO of the Select Committee
Status: Draft



Adjusted proposals for the level of renewal fees for European patents with unitary effect
The document can be found here. I do not have an official link.
Status: Draft? ('adopted in principle' by the Select Committee)

Photo "Leather Bound Books" by THOR obtained via Flickr  under a  CC-By license

Wednesday, June 24, 2015 Epo sets level of renewal fee for unitary patent

The EPO announced that the level of the renewal fees for a unitary patent will be set according to the 'true Top 4' level. This makes this the first of the new fees that have been definitely decided and is out of the draft phase. As to the EPO, they remain on course for granting the first unitary patent in 2016 (if all other parties will also remain on course remains to be seen, as discussed earlier.)

Not knowing what the renewal fees would be was frequently cited as the major stumbling block for applicants in planning their filing strategy. Ignoring the fees for eventual litigation, there are three fees that will be relevant when deciding for or against the unitary patent: the opt-out fee, the renewal fee, and the cost of requesting unitary effect. The renewal fees are now decided. I'm not sure the cost for requesting unitary effect has been formally, but is has been known for some time that this will be free. In the current draft, an opt-out for a patent or patent application will cost €80.

Based on these fees, an applicant can take a look at its patent portfolio and run the numbers.

The true top 4 renewal fee are based on the sum of the renewal fees currently paid for the four most frequently validated countries (Germany, France, UK and the Netherlands). Speaking purely financially, this would make the unitary patent attractive for:

• Applicants who currently validate in four or more countries
• Applicants who currently validate in fewer than four countries, but who expect that the reduced validation and renewal overhead compensate for increased renewal fees
• Applicants who currently validate in fewer than four countries, but who want 'more protection per renewal euro'

The renewal fees cover 'the territory of the participating 25 EU Member States'; so I do not expect the renewal fee to increase if more countries ratify. However, the renewal fees may be revised after four years. (I presume this means in 2019, not necessarily after four years of unitary patents.)

Battistelli commented that

"I am confident that today's decision strikes a positive balance, ensuring that the fees represent a real cost saving to the user and also providing a healthy operating budget for the EPO and the participating Member States. This is another major step in achieving truly uniform patent protection in Europe." 

The Select Committee now needs to decide how the renewal fee income will be distributed between the member states. For sure this will not be an easy discussion, but this will not make as much of an impact on the end users of the new system.

Friday, June 19, 2015 EPO favours lower renewal fees

 Last Monday  the Committee on Legal Affairs of the European Parliament had an 'Exchange of views the President of the European Patent Office, Benoît Batistelli' (here is the agenda of the meeting).

I haven't seen meeting notes of that meeting, but according to Intellectual Property Watch
the EPO favors the so-called Top 4 proposal for the renewal fees. Currently discussions around the unitary patent renewal fees focus on two proposals made by the EPO: the "Top 4" and the "Top 5" proposal.

In the "Top 4" and "Top 5" proposal, the renewal fees are based on the current renewal fees that would be due for a validation in four, or five countries respectively. In the Top 5 proposal there is a reduction for some patent proprietors, in particular SMEs.

The Top 4 proposal has lower renewal fees and fewer rules; There is no need to keep track if an applicant is still small enough to fall under the SME definition. Apparently, it is also what the EPO favors.

Friday, May 29, 2015 New proposal renewal fees unitary patent

The EPO has made a new proposal for the level of the renewal fees that would be payable for a unitary patent. Accompanying the proposal is a document with costs comparisons between a classic European patent and a unitary patent.

According to the document, the new proposal is in response to requests that the level of the renewal fees payable during the first few years of a unitary patent's life be adjusted. The adjusted proposals, bases the fees for the first ten years on the sum of the national renewal fees payable in the countries in which European patents are most frequently validated.

The previous two proposals had names TOP4 and TOP5. The TOP5 proposal is higher than the TOP4 proposal but has a fee reduction for small and medium sized enterprises (SMEs). The new proposals are named true TOP 4 and true TOP5.

The new true TOP 4 renewal fee scheme level is based on the sum of the renewal fees paid today for the four most frequently validated countries. The true TOP 5 level is based on the sum of renewal fees paid today for the five most frequently validated countries.


The new renewal fees are in the table below, together with the previous proposal.

	Top4	True  Top4	Top5	True Top5
2nd year:	350	35	350	85
3rd year:	465	105	465	165
4th year:	580	145	580	255
5th year:	810	315	810	455
6th year:	855	475	880	645
7th year:	900	630	950	825
8th year:	970	815	1110	1050
9th year:	1020	990	1260	1255
10th year:	1175	1175	1475	1475
11th year:	1460	1460	1790	1790
12th year:	1775	1775	2140	2140
13th year:	2105	2105	2510	2510
14th year:	2455	2455	2895	2895
15th year:	2830	2830	3300	3300
16th year:	3240	3240	3740	3740
17th year:	3640	3640	4175	4175
18th year:	4055	4055	4630	4630
19th year:	4455	4455	5065	5065
20th year:	4855	4855	5500	5500
Total over 20 years	37995	35555	43625	41955
Total over 10 years	7125	4685	7880	6210

As you can see the renewal fees are considerably less in the early years. This means that the price increase after grant of patent has disappeared. The total renewal cost over the first 10 year is thus reduced: 34% for Top4, 21% for Top5.

Over the total 20 years patent can remain in force, the total cost reduction is less in percentage. (The table does not show the renewal fees for SMEs in case of the TOP5 proposals. Both in case of TOP5 and in case of True TOP5, some entities receive a 25% cost reduction).

The graph below shows the accumulated costs in euro for the Top4, True Top4, Top5, and True Top 5.  

Last June a new draft version of the version of the 'Rules relating to unitary patent protection' has been adopted by EPO. I understand that the current version will be the same as the final version except for a small number of remaining issues. I've been looking at the nearly-definitive version and will start a series of posts noting thing that struck me.

The rules of last year had three alternative versions of the requirements for obtaining unitary effect. These options reflected the difficulty in interpretation the corresponding requirement from the EU regulation 1257/2012. According to article 3, the a "European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States (...) "

Should it matter if most participating member states have not yet ratified the unified patent court agreement, and thus no unitary effect would be available in those states? (Article 18(2)). And how about recent EU member states, such as Malta. Many EPO currently pending patent applications were filed before Malta joined EPO and thus cannot obtain the same claims for that state. Can those patents get unitary effect? I referred to this as the 'Malta problem'. And what should happen when Croatia (currently EPO and EU member but not a participating member state) decides to join the unitary patent system?

The current draft rules have made a choice in this respect. Rule 5(2) requires that "Unitary effect shall only be registered if the European patent has been granted with the same set of claims in respect of all the participating Member States.".   The notes to the rules further clarify that "unitary effect is registered only where the European patent has been granted with the same set of claims for all the 25 participating member states, irrespective of whether these States have ratified the UPC Agreement or not."

This means that all patent applications filed before 1 March 2007, i.e., before Malta joined the EPC will not be eligible for unitary effect, even if these patents are granted after the unitary system takes effect. It also means that once the Croatia joins the unitary system, any patent application 1 January 2008 is not eligible.

It would be impracticable if some patents which are eligible for unitary effect lose this status. In this respect, it would be easiest if Croatia joined the unitary system before the unitary system takes effect or after 2028, when all patent that could not designate Croatia have lapsed.  Perhaps, sooner is better than later in this regard.

Monday, August 25, 2014 EPO (nearly) adopts rules for unitary patent

EPO has announced in a Communiqué that the Select Committee of EPO has adopted 'in principle' the Draft Rules relating to Unitary Patent Protection. The communiqué does not link to a copy of the draft. However, a copy is hosted by Bristows

A full decision on the rules for the unitary patent could not yet be taken as no agreement was found on a number of topics. The communiqué only reveals that these topics concern 'some technical aspects' and a 'one rule relating to financial aspects'.


The  rule relating to financial aspects may refer to Rule 25. Rule 25 details who is going to pay for the unitary patent work of the EPO if the renewal fees don't cover it. Also the renewal fees will be further discussed in October.

Wednesday, May 07, 2014 EPO board issues a statement on the Unitary Patent and Unified Patent Court.

The Economic and Scientific Advisory Board (ESAB) of the EPO has issued a statement on the Unitary Patent and Unified Patent Court.

The statement is generally positive, and points out a number of advantages of the new system. According to the Board:

Benefits of the unitary patent include:

• Administrative simplification of patenting in Europe, 
• Potential for saving costs, including validation, translation, and post-grant administration costs, 
• Geographic extension of patent protection. 

 
 Benefits of the unified patent court include:

• Reduction in the high cost of enforcement for firms that validate in many or all member states
• Developing harmonized and consistent jurisprudence throughout the territory of the member states

Concerns include

• Unitary patent renewal fees and the costs related to litigation before the Unified Patent Court
• Increased complexity due to the additional tier added to the patent system
• Non-Practising Entities may become more active in Europe

The findings of the Board are based on a workshop they organized in December 2013, and a study they commissioned to Europe Economics.

Thursday, December 19, 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, December 11, 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.