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.

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.

Thursday, June 13, 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.

Wednesday, April 24, 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, April 22, 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.´