Institut der beim Europäischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before the European Patent Office
Institut des mandataires agréés près l'Office européen des brevets
The unitary patent
The European patent with unitary effect in the
participating member States
Mihaela TEODORESCU
epi Vice-President
March 15, 2013
AIPLA-epi meeting, Munich
1
It was a long way to go
• 1962: first draft
• 1975 (+1985 +1989): Luxembourg Conference →
Convention for the European patent for the Common
Market (Community Patent Convention, 9 States)
• 2000: “Proposal for a Council Regulation on the
Community patent” (European Commission)
• 2010: “insurmountable difficulties existed, making a
decision requiring unanimity impossible now and in the
foreseeable future” (Council)
• 2011: 25 EU States → enhanced cooperation (using the
institutions and procedures of the EU).
March 15, 2013
AIPLA-epi meeting, Munich
2
He is born the divine child
• 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. (OJ EU L361/31.12.2012)
• 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. (OJ EU L361/31.12.2012)
• Both to apply from 1 January 2014 or the date of entry
into force of the Agreement on a UPC, whichever is the
later.
March 15, 2013
AIPLA-epi meeting, Munich
3
Unitary patent? Almost …
• A unitary patent is single patent granted with equal effect
throughout each and every member state of a territory ,
maintained and litigated as a single unit across the
territory, with infringement and validity decisions applying
equally to all member states.
• Prior user rights remain national
(Art.28 UPC Agreement)
• Compulsory licensing remains national
(Whereas 10, Regulation 1257/2012)
• The mechanism for SPC’s is unclear
• And no-one knows how prior national rights would be
considered if discovered after grant
March 15, 2013
AIPLA-epi meeting, Munich
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Today: bundle patent
• European patent application designating 38 States
• Publication of the mention of the grant of the European
patent
DE GB FR RO etc...
• “The European patent shall, in each of the Contracting
States for which it is granted, have the effect of and be
subject to the same conditions as a national patent
granted by that State, unless this Convention provides
otherwise.”
(EPC Article 2-European Patent, paragraph 2)
March 15, 2013
AIPLA-epi meeting, Munich
5
Regulation n°1257/2012: option
• European patent application designating 38 States
• Publication of the mention of the grant of the European
patent
• Within 1 month: option to file at the EPO a request for
unitary effect in the participating member States.
-One condition: same set of claims (Art. 3(1)).
-One trap: language of the proceedings.
• If NO, back to the previous slide.
• If YES, see next slide.
March 15, 2013
AIPLA-epi meeting, Munich
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Tomorrow: bundle patent !
• European patent application designating 38 States
• Publication of the mention of the grant of the EP patent
• Request for unitary effect in the participating member
States
EP patent with
unitary effect in
25 Member States
March 15, 2013
ES IT
CH NO TR
non-participating outside EU
AIPLA-epi meeting, Munich
etc...
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Validation
• No formality beyond the request for unitary effect.
but ...
• Transitional provision (during 6-12 years):
-One full (human) translation to accompany the request;
-English translation if the unitary patent is not in
English;
-Else translation in any official language of the EU.
March 15, 2013
AIPLA-epi meeting, Munich
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Rights under the unitary patent
In the UPC Agreement
•
•
•
•
•
Art 25 - Right to prevent the direct use of the invention
Art 26 - Right to prevent the indirect use of the invention
Art 27 - Limitations of the effects of a patent
Art 28 - Right based on prior use of the invention
Art 29 - Exhaustion of the rights conferred by a
European patent
March 15, 2013
AIPLA-epi meeting, Munich
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Limitations of the effects of a
patent (Art 27 UPC)
(a) acts done privately and for non-commercial purposes;
(b) acts done for experimental purposes relating to the
subject matter of the patented invention;
(e) the extemporaneous preparation by a pharmacy, for
individual cases, of a medicine in accordance with a
medical prescription or acts [...];
(c) the use of biological material for the purpose of
breeding, or discovering and developing other plant
varieties;
(d) and (f) to (l): acts specified in various international
agreements or existing EU Directives or Regulations
March 15, 2013
AIPLA-epi meeting, Munich
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Tasks entrusted to the EPO
• Governed and supervised by a Select Committee of the
Administrative Council of the EPOrg.
• Appeals : UPC exclusive competence.
• Administration of requests for unitary effect
• Registration of unitary effect and of any limitation,
licence, transfer, revocation or lapse of unitary patents
• Collection and distribution of renewal fees
• Publication of translations for information purposes
during the transitional period
• Administration of a compensation scheme for the
reimbursement of translation costs
March 15, 2013
AIPLA-epi meeting, Munich
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Have we reached the goal?
• Not quite.
• Main hurdles:
-Legal action by ES and IT at the CJ EU against the
enhanced cooperation.
-Setting of the fees and distribution key:
The EPO must be paid for its work
Compensation scheme for some translations
The system should be cheaper
No Office accepts to earn less, some want more
• Setting up the UPC
March 15, 2013
AIPLA-epi meeting, Munich
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Institut der beim Europäischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before the European Patent Office
Institut des mandataires agréés près l'Office européen des brevets
Thank you
for your attention!
March 15, 2013
AIPLA-epi meeting, Munich
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