China Intellectual Property
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Niklas Mattsson
Niklas Mattsson
Partner, European Patent
Attorney at Awapatent
‫ࠋލ‬ಭƗ୿ᇤሌ৭քয়ಭƗ‫ٺ‬ሷഺ༅‫ދ‬ഺ༅࠶ඓ‫܄‬Ӹয়‫܄‬඲൝
Niklas Mattsson ჆1999୔ࡍ್$ZDSDWHQWè෷ເЮ‫ࡄݚދ׀‬ॡ߃ᄤ൞ࢿٚຽୄሏ྆‫ދ‬പ
౯ሌ৭è๤൏Ɨ෷ߕເᇖཱིఙ၃฻‫܉‬ᆰൔӈಊҭં‫ދ‬ᆰൔӈಊཔܸ၃༇‫ن‬ᅡ֬ር࿟‫ڢ‬༇Ɨ
Ѱౖთᆊཻᇖཱིఙ၃֬က‫ن‬ҍ૑‫ދ‬+-7ᄤՕ৒໠฼ഏႼሩ‫࣌֬୔ئ‬૨‫ލ‬ቛࣣမè
Ⴖམ: [email protected]
‫ߌ׏‬: +46 (0)8 440 95 43
൴ࠖ: +46 (0)733 76 74 49
Ͼ‫׋׀܋‬: ඵ֪۩‫ف‬ଐƗ೒‫׌‬
NiklasߕࣣӏҜთౚಊࠎ‫֬ྦٌލ‬ሌ၃௦‫ܠ‬ၢࠪሌ৭ሸႵൗႯಊ‫ٺ‬༌֬‫܄‬ቛè๤൏Ɨ
෷ߕาѠሆᇞ‫ؚ‬ᄤ့௝ሌ৭ᇢఀܼয়ᇖ֬Г߀ٚຽ‫ދ‬ሌ৭ఀનҭંƗເ‫ڋ‬ཉ๮ሮ‫܋‬ය
֬ሌ৭ࣗᆶ‫ן‬ҷར଩‫ڼ‬ᄺèՕບƗ෷ߕഃӐ‫ދ‬ඊ༘ᄤ୿ᇤٚຽୄ့֬௝҇ԐГ߀ᆪඇ
63&֬Ӹ࿄‫ދ‬ಃ֫è
‫ڢ‬༇ར଩ƥ
The Future Patent System of the
European Union
NiklasࣣӏЫါ౯ᄤ೒‫ݡࠪ׌‬ບःഺ༅࠶ඓሌ৭ᆊ၉ᇽ฼ሏ྆໚ᅪ‫ྡྷ࣐ދ‬ဍࢊè
ᄤ೒‫ٌ׌‬ᄄ֬ሌ৭ෛ෋ᇖƗ෷ࣣӏ֋ರ࠶ඓሌࡌƗᄤ୿ᇤሌ৭ऌƗ෷ࣣӏքѝॡ߃Ԣ༣८
๯ളয়Ɨ‫ౖؾ‬෷ߕᅂࣣᄤૌ‫֬ݚ‬၉ఖሌ৭ෛ෋ᇖቛເ୿ᇤሌ৭ٌ֬ሌࡌᆪಭԢ༣๝ളè
NiklasकႼา඀֬࠶ඓሌӐƗ‫ۉݫ‬ਛ֘ϩᇐ‫܄‬ӸƗഺ༅ߋ࿗ƗࠕႀƗഺ༅࠶ඓကࣵ‫܄‬कƗ
ഺ༅ྗ༖‫ٺދ‬ሷߋ࿗਼ְპè෷൥$ZDSDWHQWഺଈग़࿗‫ދ‬။့ሌࡌቍ֬ӵ჻ᆴ၉ƗѰౖ
ᅂࣣ൥ૌ‫ݚ‬ሌ৭ٌሌࡌቍ֬ӵ჻è
□ By Niklas Mattsson
Niklas൥$ZDSDWHQWር࿟໅჻߽֬ӵ჻ᆴ၉è๤൏Ɨ෷თ၉ҍ‫ٺ‬๤ൠߕ֋‫ڼ‬ሩ‫ن‬ᅡ
$ZDSDWHQWთᇖ‫֬ݚ‬,3ൠ༇෵‫ދ‬ӈ၃֬‫ލ‬ቛܸ༩֬‫܄‬ቛè
՝2011୔ఖƗNiklasЫ࿑ເ୿ᇤሌ৭ཿ߽ᇖഺ༅࠶ඓ໅჻߽֬೒‫׀׌‬౼քѝè
B
72 China IP 1-2/2014
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least in those EPC countries who
are also members of the EU. Now, it
looks as though these attempts are
finally paying off and we hope to
see a new EU patent system in place
sometime during 2015. In essence,
new legislation and a multilateral
agreement on a unified patent court
will create a unitary patent right for
most of the EU territory.
Features of the Existing System
Currently, it is possible to obtain a
patent with validity in 38 contracting
states to the EPC through a single patent
application filed with the EPO. Among
the contracting states are all the 28
member states of the EU, but the EPC is
distinct and separate from the EU, and
does not form part of the EU legislation.
Pursuant to the EPC, the procedure
to grant is centralized. Also, within
nine months from the grant decision,
any third party may dispute the
validity of a patent in a centralized
opposition procedure handled by
the EPO. The EPO maintains its own
body of jurisprudence, embodied by
decisions on patentability and validity
from the various Boards of Appeal of
the EPO. Over the 35 years that the
EPO has been operational, the guiding
principles have been developed in
such a way that the procedure is
now largely considered to be wellbalanced and predictable, leading to
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࣡࿑ဍࢊ
y now, regardless of home
country, most people who
are active in the IP field have
heard that the member states
of the European Union (EU) have agreed
on new legislation concerning unitary
patent protection throughout the union.
Most have also learned that some EU
countries are outside of the system,
and that the new system will form an
alternative to the existing regime rather
than replacing it altogether. In this
article, the main features of the new
system will be explained, and some
strategic advice will be provided.
The existing system for obtaining
and enforcing patents in Europe is
based on national jurisdiction. For 35
years it has been possible to obtain
a central grant decision from the
European Patent Office (EPO) on a
European patent application, and this
grant decision is binding on all of the
38 European Patent Convention (EPC)
contracting states. Subsequent litigation
concerning validity and infringement
has to be carried out on a country-bycountry basis. Once a European patent
has been granted it is also necessary to
validate the patent in countries where
protection is desired, which is a costly
process.
The current state of affairs has long
been considered to be suboptimal,
and many attempts have been
made to improve the situation, at
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www.awapatent.com
high-quality patents in a market of
substantial size.
However, the system is not without
deficiencies. Once granted, a European
patent is subject to the separate
jurisdiction of each country where it is
valid. In order to become an effective
national patent right in one or more
of the contracting states, the granted
European patent must be validated
there. Different contracting states have
different validation requirements; some
require a translation of the complete
patent into the official language of the
state, whereas others require translation
of the claims only, and yet others
have dispensed with the translation
requirements altogether but still require
registration of an address for service.
After validation, annual maintenance
fees are payable in each country
where protection is to be upheld. Of
course, the validation procedure and
subsequent national maintenance
fees add significantly to the total
cost of obtaining and maintaining
patent protection in Europe. We have
estimated the cost of validating a
standard European patent in all the
available EU states (i.e. those 28 EPC
countries that are also EU members)
to be approximately RMB 260,000, of
which approximately RMB 180,000 are
translation costs. If only the largest
5 countries that have no translation
requirement are selected, the validation
www.chinaipmagazine.com
cost is still approximately RMB 35,000.
Another aspect of the present
system, which is also commonly
perceived as a drawback, is that
the result of the national validation
procedure is a collection of national
patents. While these patents share
a common origin in the form of the
granted European patent application,
they are in effect separate, national
rights, subject to national jurisdiction.
This collection of validated patents
from a common source is frequently
referred to as a “bundle” of national
patents, and a European patent
validated in this way is called a “bundle
patent.” Any matters concerning
infringement and/or validity of the
bundle patent must be dealt with on
a country-by-country basis. It goes
without saying that carrying out
patent litigation in many different
countries is very costly. Matters are
made worse by the fact that there are
differences between individual EU
member states, for example in the
interpretation of substantive patent
law, the procedural rules of litigation,
the amount of cases that are tried
and, consequently, the experience of
judges in adjudicating the often very
complex issues involved.
The EU leadership has attempted to
solve these problems for a very long
time, and many attempts have failed.
Now, however, 25 EU members have
adopted laws that create the possibility
to obtain Unitary Patents, and an
agreement which creates a new, supranational patent court.
European Patents with Unitary
Effect
The first aspect of the new patent
system in the EU is the introduction
of a new title of intellectual property.
Through two EU Regulations adopted
on December 17th 2012, it will become
possible to obtain, from the EPO,
a patent covering 25 of the 28 EU
member states (all EU members except
Italy, Spain and Croatia) without the
need for validation. Such a patent is
referred to as a “European Patent with
Unitary Effect,” or “Unitary Patent.” It is
important to note that this introduces
an additional option for parties seeking
patent protection in the EU, and that
it will still be possible to use the old
validation process to obtain national,
“bundle” patents instead, if desired.
Important, too, is that the procedures
at the EPO for filing, prosecuting and
obtaining the grant of European patent
applications will be unchanged, as will
the opposition procedure. In other
words, the familiar practice of the EPO,
as developed over almost four decades,
will remain.
Instead of validating a granted
European Patent in the 25 participating
EU countries, a patent holder will
now have the option to obtain a
Unitary Patent for these countries.
This is accomplished by simply filing
a request for unitary effect with the
EPO. The request must be filed within
one month from the publication of
the grant decision. Unitary effect can
only be obtained if the claims of the
granted application are identical for all
of the 25 states, and a Unitary Patent
may only be transferred, revoked
or allowed to lapse in the whole
area. Also, if there are several patent
proprietors, for example different
proprietors for different states, all
proprietors must act in unison to
request unitary effect. These rules,
and others, are in place to safeguard
the unitary character of the patent
throughout the participating states.
Annual maintenance fees for the
Unitary Patent will be payable to
the EPO during the 20 year lifetime
of the patent. A novel aspect of the
new system is that it introduces the
possibility for a patentee to obtain a
reduction in the annual fees, which
is available if the patentee files a
statement with the EPO stating that
the patent is available for licensing.
Neither the amount of the annual
fee or the reduction have yet been
fixed at this point so it is difficult to
say whether or not this option will
reach the stated goal of facilitating
technology transfer.
As stated above, the option of
obtaining a Unitary Patent will only
be available within the EU member
states, and not all countries have
chosen to participate. Due to political
issues, mainly having to do with the
language regime, Italy and Spain have
not accepted the new laws, and it
will not be possible to have a Unitary
Patent valid there. Also, several EPC
member states are not EU members,
and a Unitary Patent will therefore not
be valid there either. As a consequence,
it will be necessary to make sure
that validation is done in those nonparticipating countries if protection is
desired there, in addition to requesting
unitary effect in participating EU
member states.
With regard to languages, a European
patent application may be filed in any
language, but must be translated early
in the procedure to one of the EPO
working languages, English, French
or German. It follows that a European
patent is always granted in one of
these three languages. In the new
EU legislation, it is envisaged that all
Unitary Patents will eventually be made
available in all EU languages through
the use of translation software. It
is recognized, however, that these
translations are not yet of sufficiently
high quality, so there is a transitional
period of no more than 12 years,
during which there is a translation
requirement also for granted Unitary
Patents. If a Unitary Patent is granted
in German or French, a translation of
the patent into English must be filed.
If the patent is granted in English,
the patentee may choose any other
EU language in which to translate the
patent. The translation must be filed
together with the request for unitary
effect within one month of the date
that the patented was granted.
As to the practical consequences
of obtaining a Unitary Patent, the
most obvious one is that the cost of
protecting an invention in the EU is
substantially lower using the option
of registering unitary effect, especially
compared with the cost of validation
1-2/2014 China IP 73
China Intellectual Property
GLOBAL ip
in all participating states. Instead of
the estimated RMB 260,000 for full
validation, it is estimated that the
cost for obtaining unitary effect will
be a mere RMB 6,000. During the
transitional period, when a translation
into one language must also be filed,
the costs will be somewhat higher,
around RMB 22,000. Of course this too
is a substantial savings and lower than
the cost of validating a “bundle patent”
in only 5 countries. In other words,
the new system offers more patent
protection for less money. On the other
hand, unitary effect also means that
all of the eggs are in one basket – if
the patent is lost in litigation then it is
lost for the entire territory. Also, it is
not possible to trim the geographical
scope of a Unitary Patent over time, by
allowing it to lapse in certain states and
remain valid in others.
In addition to applying to all patent
applications filed when the system is
up and running, the new option will
also be available for European patent
applications already pending on that
date. In other words, if an applicant is
interested in obtaining a Unitary Patent
on his or her existing application, he
or she is advised to consider whether
there are tactical measures that could
be taken to ensure that the patent is
not granted until the new rules are in
effect.
Unified Patent Court
The second aspect of the new
patent system in the EU is the
establishment of a patent court, the
Unified Patent Court (UPC), having
jurisdiction over all European patents
and the power to take decisions
with effect in all of the participating
countries. The court is established
through a multilateral agreement on
a Unified Patent Court opens only to
EU member states, which was signed
by 25 member states on February
19th 2013. Unlike the Unitary Patent
legislation, the court agreement was
signed by Italy, but Spain and Poland
refrained. Croatia, being a new EU
member since July 1st 2013, has yet
74 China IP 1-2/2014
had no opportunity to join either.
The general aim of the new court is
to do away with the need for parallel,
national litigation in the patent
area. This is achieved by one legal
proceeding for all member states,
which will reduce the costs borne by
the parties, bring the same result for all
countries, and make it more difficult
to use complicated forum rules to stall
proceedings. The proceedings in the
court will be comparably quick, with
the time to a first instance decision of
no more than twelve months, and the
court will employ professional judges
with special training in patent matters
in order to guarantee high quality and
consistent decisions.
Importantly, the UPC is to have
exclusive competence not only over
the new Unitary Patents, but also
to all European patents granted
and validated in the classical way,
i.e. the “bundle patents,” and to
supplementary protection certificates
(SPCs) for medicines and plant
protection products. Also, it will have
jurisdiction over all such patents
and SPCs, regardless of whether they
were granted before or after the court
becomes active.
The drafters of the agreement
have recognized that not all patent
proprietors may be pleased with
having to submit their existing
“bundle patents” to the jurisdiction of
an untested new court. Therefore, a
transitional period of seven years has
been introduced, during which it will
be possible for proprietors of bundle
patents to “opt out” of the court’s
jurisdiction. If a statement to opt out
is filed for an existing bundle patent,
the UPC will not have jurisdiction over
that patent, and national courts will
retain jurisdiction over the national
parts of the bundle in the same way as
in the existing system. Regardless of
the length of the transitional period,
the opt out will remain throughout
the lifetime of the patent, unless the
opt out statement is withdrawn by
the proprietor. In addition to, and
independently of, the possibility to opt
out, it will also be possible during the
seven year transition period to initiate
actions concerning bundle patents
in the national courts, despite that
such patents may also fall under the
jurisdiction of the UPC.
According to the court agreement,
a statement to opt out must be filed
with the court itself. On the other
hand, opting out is not possible if an
action concerning the same patent
has already been initiated in the
UPC. In other words, if a proprietor
desires to opt out an important bundle
patent from the UPC’s jurisdiction, it
is advisable to do so as soon as it is
possible, in order not to be “trapped”
within the UPC, for example by the
early filing of an invalidation action
by a competitor. Because of this
scenario, and because an opt out
statement can be withdrawn at any
time, it is expected that the court
could face a very large number of
opt out statements during the initial
period of operation. As a solution, it is
being proposed to introduce a sunrise
period before the court comes into
operation, during which advance opt
out statements could be filed with the
EPO. The possibility to opt out is not
available for Unitary Patents.
With regard to the structure and
organization of the UPC, various
political compromises and negotiations
are showing through. The court will
have two instances: a first instance
which renders an initial decision, and
a second instance for hearing appeals
of first instance decisions. Whereas
the second instance is composed
of only one entity and located in
Luxembourg, the organization of the
first instance is significantly more
complex. To begin with, it is divided
into different divisions: a Central
Division; several Local Divisions, in
individual member states; and several
Regional Divisions, shared between
two or more collaborating member
states. The Central Division, competent
to hear all cases of invalidity and those
infringement cases with defendants
from outside of the participating states,
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is in turn divided into three sections,
located in Paris (also the seat of the
court), in London and in Munich. The
technical area of the subject-matter of a
Central Division case will control where
it will be heard, with pharmaceuticals
and chemistry in London, mechanical
engineering in Munich, and everything
else (including telecommunications
and information technology) in Paris.
The court agreement contains
detailed provisions concerning what
types of cases should be filed in which
division of the court, as well as rules
on what languages are permitted.
Also, rules of procedure for the UPC
are in the process of being finalized.
A fifteenth version of these rules
were subject to public consultation
during the fall of 2013, and it is widely
believed that these rules are now nearly
in their final form.
Remaining Issues and Entry into
Force
Some details of the new system
have yet to be decided upon. The most
important of these concern money.
In particular, the cost of key user fees
are not yet clear. Such unknown fees
include the renewal fees for Unitary
Patents, and the court fees for starting
different actions at the UPC. Public
consultation on proposals concerning
these fees are expected to take place
during the first half of 2014. Another
debated fee is a proposed fee for filing
an opt out statement for an existing
bundle patent. Many have commented
that it is unfair to have to pay for not
wanting to be subject to a new court,
in particular as this court was not in
existence at the time the patent in
question was obtained. It looks likely
that there will be a fee for opting out
despite such criticism.
The court and the option to request
unitary effect will become operational
after 13 member states have
completed the process of ratification
of the court agreement. Different
commentators have different opinions
on when this will be. At present, the
consensus points to mid-2015 as a
likely time of entry into force of the
new provisions.
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1-2/2014 China IP 75