Tuesday, March 24, 2015 Luxembourgh progressing with unified patent court ratification

It appears that the Luxembourg parliament is making progress, or even ratified the Agreement on a Unified Patent Court. Ratification of the unified patent court implies that the unitary patent will be valid in Luxembourg as well.

On 18 March 2015 a vote was held on Dossier parlementaire 6696: 'Projet de loi portant approbation de l'Accord relatif à une juridiction unifiée du brevet, signé à Bruxelles, le 19 février 2013' (Bill approving the Agreement on a unified patent court, signed in Brussels, 19 February 2013).

The website of the Chambre des Députés informs us of a 'Premier vote constitutionnel (Vote positif)' (First constitutional vote (Positive vote)) and that 'Une demande de dispense du second vote a été introduit'(An application for exemption of the second voting was introduced). 

I can't tell from Luxemburg's  website if the exemption was accepted or not. [Update: according to commenter TreatyNotifier this was accepted]

For now ratification has not yet shown up on the the site of the Council of the European Union, where the instrument of ratification will have to be deposited. We have seen with previous ratifying countries that there may be some time between the ratification in parliament and the deposition of the instrument.

 
All 54 member voted in favor of the Unified patent court.  According to the tweet below the discussion was mainly about language and costs--two unitary patent hot button items.
 

Luxembourg parliam today approved #UnifiedPatentCourt Agreement unanimously! main discussion was languages/costs. #unitarypatent @ChambreLux
— Pacta sunt servanda (@TreatyNotifier) March 18, 2015

 

Wednesday, March 11, 2015 Battistelli makes proposal for unitary patent renewal fees

The unitary patent changes the way renewal fees are paid.

If you choose for classic EP validation, then after grant you cease to pay renewal fees to the EPO, but start to pay national renewal fees.  In case of a unitary patent, then after grant you will continue to pay renewal fees to the EPO, but do not start to pay national renewal fees. [Except of course for non-participating countries like Spain or Italy, where one would still do national validation and pay a national renewal fee].

One of the main open questions regarding the unitary patent is the level of the renewal fees.
 
Discussions about the renewal fee have been ongoing for some time, but are not public. Fortunately, IpKat has now leaked portions of a document  "Proposals for the level of renewal fees for European patents with unitary effect" that, apparently, Battistelli,  the president of the EPO, has sent to the Select Committee. I haven't seen the document myself yet, and am basing myself on what IpKat shared with us.

The first impression is that the document is not very surprising. For a long time, it was expected that the level of the unitary renewal fee would be based on the sum of about 4 or 5 national renewal fees. This document confirms that rumor. 

For patent proprietors who have license income based on the size of the economies their patents cover, it seems the unitary patent could be a good deal. For the price of a medium sized portfolio (4 or 5 validated countries) the area covered will be much increased.

In the document, two detailed plans for the unitary renewal fee are proposed. Both proposals have the same structure, in three phases:

Years 3 to 5:                 same as the current EPO renewal fees for patent applications (the "internal renewal fees (IRF)"

Years 6 to 9:                 a transitional level between the IRF level and the year 10 level

Years 10 and beyond:  a level equivalent to the total sum of the national renewal fees payable in the states in which European patents are most frequently validated (TOP level).

It is in the TOP level where the two proposals diverge. 

In a first proposal the Year 10 onwards level is based on current renewal fee levels for FOUR European countries (TOP 4 level). In the second proposal the Year 10 onwards level is based on current renewal fee levels for FIVE European countries (TOP 5 level) but with a reduction for certain categories of patentees, namely SMEs, natural persons, non-profit organisations, universities and public research organisations.

The following table gives the level of the proposed fees. The table is copied from the IpKat posting:

The first thing to notice is that both of the proposed renewal fees (Top4 and Top5) are actually lower than the EPO's current internal renewal fees for the first 10 years. So getting a grant within these first 10 year would lower your renewal fee cost compared to the renewal fee you would have to pay if your application was not yet granted. 

To put these numbers into perspective I compared the renewal costs for years 6 and 15 for traditional validations of three different sizes to a unitary patent using the TOP4 or TOP5 fee level.

The three validations that I've compared consisted of the following countries: Large (13 countries DE, UK, FR, AT, NL, BE, LU, IE, SE, DK, FI, GR, PT), Medium (5 countries: DE, UK, FR,NL, SE) and Small (3 countries: DE, UK, FR).

For the year 6 renewal fee, I get the following numbers:

Large EP validation:    1585

Medium EP validation: 651

Small EP validation:    309

Unitary Patent, Top4:   855

Unitary Patent, Top5:   880

For the year 15 renewal fee, I get the following numbers

Large EP validation:     7482

Medium EP validation: 3307

Small EP validation:     1906

Unitary Patent, Top4:    2830

Unitary Patent, Top5:    3300

As expected, for large validations the unitary patent is less expensive, while for a small validation the unitary patent is more expensive. The more interesting case is the medium validation. For the year 6 renewal fee, the unitary patent is more expensive, but for the year 15 renewal fee the TOP5 unitary patent is almost exactly the same. 

Agent costs and translation costs have not been taken into account. My first impression is that these proposals are not that bad. Especially, the TOP4 scenario seems like a good deal. Even compared to a modest portfolio, you get coverage for a much large area for the same amount of money. On top of this, you save on translation and administrative overhead.

Monday, March 09, 2015 English translations published of opinions in Spain's challenge against Unitary patent

At present Spain has two legal challenges against the unitary patent system pending with the Court of Justice (Cases C-147/13 and C-146/13). We reported earlier that the Advocate General published its opinion in these two cases. (Also discussed here.)

Both opinions of the Advocate-General were available in 22 different languages but not in English. This has now been rectified and an English translation is now available, via the links provided above.

Monday, March 02, 2015 Unitary software patents

The FFII notes that the European commission clarified that the unitary patent will not change the patentability status of computer programs. In an update to a Frequently Asked Question the European commission states it as follows:

The patentability requirements for European patents with unitary effect are identical to those of "classical" European patents. The envisaged regulation on unitary patent protection does not contain any particular disposition or derogation on the patentability conditions for inventions.

The European commission is of course completely correct in this assessment. A unitary patent is obtained by first getting a regular European patent granted at the EPO. Within one month after the mention of the grant is published, the proprietor of the new patent can file a request for unitary effect with the EPO. (Article 9 Regulation 1257/2012). The unitary patent makes no substantive changes to the process at the EPO before grant.

I can thus also predict that the unitary patent will not change the patentability of, say, biotech inventions or any other category of patents.

Under European law, something is not inventive just because you implemented it in software; you cannot get a patent for software 'as such'. However, if the software has technical character and is inventive over the state of the art the EPO will award a patent for it. Thus once the unitary patent system has started it will be possible to get protection of inventions implemented in software with one unitary patent in all participating member states. 

Monday, February 23, 2015 Is the Italian government reconsidering its position on the unitary patent?

At present the Italy has a unique position with respect to the unitary patent: participating in the unified patent court but not in the unitary patent.


Italy is one of the countries that are excepted from the EU unitary patent regulation. This means that a unitary patent will not be valid in Italy. Also Spain negotiated a special position for the unitary patent. Unitary patent won't be valid in Spain either.

Unlike Spain however, Italy did sign the Agreement on a unified patent court. Italy has not ratified this document yet, but as far as I know Italy does intent to sign this Agreement eventually [ at present only six countries have ]. 

Assuming Italy would ratify the Agreement, we would have the interesting situation that a unitary patent would not be valid in Italy, but a local division of the unified patent court could nevertheless revoke a unitary patent for the rest of Europe. Fortunately, this scenario would be under the control of the patent proprietor. Since a unitary patent cannot be infringed in Italy, a local division of the unified patent court could still be competent if the alleged infringer defending the suit has its residence in Italy (Article 33(1)(b) of the agreement).

Apparently the Italian government is considering how to move forward in this curious situation. According to Gualtiero Dragotti the Italian Ministry of Economic Development submitted a formal call for comments about the following options:



Option 1: Italy to join the Enhanced cooperation and to ratify the UPC Treaty;

Option 2: Italy remaining adverse to the Unitary Patent but to ratify the UPC Treaty; or

Option 3: Italy against both the Unitary Patent and  the UPC Treaty.


The first option would move Italy away from Spain.  In a sense this is already the case. During the first legal challenges against the unitary patent system, Italy and Spain both complained at the Court of Justice. However, in the current legal challenge only Spain is a party.


The second option would continue the current situation. It seems that this option is a loss for everybody. The unitary patent loses an important economy, but on the other hand Italy will have to bear the costs for a unified patent court.

With the third option, Italy would move closer back to Spain which did not sign the Agreement, and thus will also not ratify it, at least not in the foreseeable future.

Being an important economy (fourth in GDP according to Wikipedia) and the fact that they are not active anymore in challenging the unitary patent, it is my expectation that the Italy will take the first option and join the unitary patent. The first option would bring Italy back into the unitary patent fold and join Austria, Belgium, Denmark, France, Malta and Sweden as the fully ratified countries.

The request for comments only gave 4 days to respond (the request was issued on 16 February, while last Friday was the deadline for comments). What is the reason for this urgency?

Monday, February 16, 2015 Does a lack of judicial review initiated by third party pose a threat to the unitary patent?

Does a lack of judicial review initiated by third party pose a threat to the unitary patent? This question was raised by Gordon Harris based on an experience he had with such a situation (found via an article by James Nurton).

At the EPO a third party has only limited possibilities to attack a patent based on alleged administrative errors of the EPO; Before grant the only procedural option is to file third-party observations (Art. 115 EPC) and after grant one may file an opposition (Art. 99 EPC). The problem is that one is not a party with the first option and that one may raise only a limited--mostly substantive--list of issues with the second option (Art. 100 EPC).

National judges could potentially rectify such errors, but they are bound by a similarly limited set of objections as well, and may moreover not be willing to review administrative decisions of the EPO either.

In a lengthy court case between Virgin and Zodiac this played a role. The EPO had granted a patent for the UK against the applicant's explicit wish not to designate the UK.

Efforts to correct this error of the EPO turned out to be fruitless. The appeal boards rejected a request for correction of the decision to grant filed during opposition on the basis, that the opposition division is not competent to do so. The situation in the national courts was similar.

In the end, the court cases were unsuccessful for the patent proprietor, but because the patent was found not to be infringed.

Presumably also the unified patent court will refuse to review administrative decisions of the EPO.
The article awaits with interest the outcome of Spain's petition to the CJEU regarding the unitary patent. Indeed, Spain has complained against this. In its legal challenge against the unitary patent, Spain complains of 'Breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.' (Case C-146/13, in the words of the official summary)

No verdict has been reached yet, but  advocate-general has published it conclusion. The conclusion seems to point into a different direction. The opinion notes that "La protection unitaire que le règlement attaqué organise ne prend donc effet qu’après que le brevet européen est délivré et aussi longtemps que celui-ci est maintenu en vigueur. Ce règlement se borne ainsi à attribuer aux brevets européens une qualité supplémentaire, à savoir l’effet unitaire, sans affecter la procédure réglée par la CBE (24), que les États membres de l’Union en tant qu’États parties à cette convention sont tenus de respecter."

 [ for some reason the opinion is translated in 22 languages except English; in my translation:

The unitary protection that the Regulation organizes therefore takes effect only after the European patent is granted and for so long as it is kept in force. This regulation is thus limited to assigning to European patents an additional quality, namely the unitary effect without affecting the procedure set by the EPC (24), that the EU Member States as States parties to the Convention must respect.

The  Court of Justice of the EU does not have to follow the conclusion of the advocate-general, but often does so. With this opinion it does not look likely that they will revoke the unitary patent on this ground.

At present it looks it that also under the unitary system administrative errors cannot be judicially reviewed at the initiative of third parties. Frankly, I'm not directly convinced, even by this extreme case, that this is a situation that needs to be addressed. As they say: Hard cases make bad law.

[This posts was prepared only on the basis of the information found in this article and the public file at the EPO. We also blogged about the Board of appeal's decision T 1495/09]

Wednesday, November 19, 2014 Opinions in legal challenges against the unitary patent available

The Advocate General has delivered opinions in Spain's two pending legal challenges against the unitary patent. 

The unitary patent is built on three main pillars: An agreement that creates a new judiciary to decide on infringement and validity for the whole of the EU. This agreement was agreed outside the EU, i.e., it is not an EU regulation.  Next there are changes in the regulations to the European Patent Convention so that the European Patent Office will grant unitary patents. Finally, there are two EU regulations that ensure that unitary patents have the same scope and effect in all EU member state.

This case is targeted against the last pillar. Spain wants to have these last two regulations, regulations 1257/2012 and 1260/2012, invalidated.

When a state brings a case to have a regulation invalidated, an Advocate General presents his opinion on the matter before the judges give their ruling. The Advocate General's opinion is not binding on the court. In both these cases judgment will be passed later. Often, though not always, the opinion of the Advocate General is followed though.  The opinions can be found here:  C-146/13 for regulation 1257/2012, and  C147-13 for regulation 1260/2012. A large number of translations are provided of these French texts, however at present I do not find an English translation.

Spain has offered 7 and 5 reasons respectively as to why the two regulations should be invalidated. In its two opinions the Advocate General considers each reason in turn and concludes that none of them are decisive. Most of the complaints seem rather formal in nature; arguing that the EU did not have the authority to make this regulation or that the regulation violates EU law. The arguments against 1260/2012 include the complaint that Spain is discriminated against on the basis of their language.

According to Spain, by endorsing the EPO patent system, the EU favors the official languages of the EPO, i.e. English, German and French. Anyone who has a different native language, say Spanish, is at a disadvantage when trying to obtain patent protection.

The Attorney General agrees with this point:

39.      Il ne fait aucun doute ici que les personnes qui ne connaissent pas les langues officielles de l’OEB sont discriminées et qu’un traitement différencié a ainsi été opéré par le législateur de l’Union.

Which I translate as:

There is no doubt here that people who do not know the official languages of the EPO are discriminated against and that the legislature of the Union has thus treated them differently.

Nevertheless, this should not lead to invalidation. The Attorney General notes that there is no absolute right using your own language in all circumstances. Furthermore, given the goal of reducing the costs of acquiring EU wide patent protection at low costs, the EU had no choice but to reduce the number of languages. In any case, according to the Attorney General, there can be no doubt that all researchers understand German, English, and French since the majority of scientific publications are in this language any way.


So, as far as the Attorney General is concerned there is no need to invalidate either one of these two regulations, so that the unitary patent can remain on track. Judgment is expected in 2015.