Patents in European Union national, European, unitary

1
Patents in European Unionnational, European,
unitary
Jakub Sielewiesiuk

• Presentation for Ukrainian Center for Innovation
• and Patent Information Services
• Kyiv - Warsaw, 2014-09-10

Protecting your knowledge and creativity, the
basis of your success.
2
Overview

• 1. National patents.
• 2. European patents
• Legal frame for European patents EPC.
• Procedure from filing to grant.
• Procedure after grant validation.
• Arising problems.
• 3. Possible solution unitary patent.

Protecting your knowledge and creativity, the
basis of your success.
2
3
National patents

• Each country has its own patents office.
• It is possible to file nationally and get a
  patents in a given country.
• Normal conditions apply national law, local
  official language, local representative etc.
• ? local patent
• ? local courts decide on infringement.

Protecting your knowledge and creativity, the
basis of your success.
3
4
Need for improvement

• National route with numerous parallel grant
  proceedings is time consuming, troublesome and
  expensive.
• Would be nice to have a better way to get a
  patent in Europe, especially in view of free,
  unitary market within European Union.

Protecting your knowledge and creativity, the
basis of your success.
4
5
The European PatentConvention (EPC)

• Convention on the Grant of European Patents,
• signed on 5 October 1973 in Munich DE
• is an international treaty within the meaning of
  Vienna Convention on the Law of Treaties (1969)

Protecting your knowledge and creativity, the
basis of your success.
5
6
EPC Contracting States

• As of
• 10 September 2014
• 38 member states
• 2 extension states
• BA (Bosnia and Herzegovina), ME (Montenegro)

Protecting your knowledge and creativity, the
basis of your success.
6
7
European patent - basics

• EPC provides
• one centralized procedure from filing to grant,
• a few post-grant procedures
• central opposition
• central limitation/revocation (on request of
  patentee)
• (having ab initio effect, in all Contracting
  States).

Protecting your knowledge and creativity, the
basis of your success.
7
8
EPC grant procedure

• European patent applications are prosecuted by
  the European Patent Office, EPO.
• EPO has offices in
• Munich (seat and headquarters),
• The Hague,
• Berlin
• and supplementary offices in Vienna and Brussels.

Protecting your knowledge and creativity, the
basis of your success.
8
9
EPC grant procedure

• EPO official languages are
• English
• French
• German
• It is possible to file in ANY language
  (Ukrainian, Russian, Latin), but translation
  into English, French or German must follow.

Protecting your knowledge and creativity, the
basis of your success.
9
10
EPC grant procedure- representation

• Companies/parties from countries other than the
  38 EPC contracting states must act through a
  representative European patent attorney.

Protecting your knowledge and creativity, the
basis of your success.
10
11
EPC grant procedure- representation

• You may choose your European attorney from any of
  these 38 countries.
• Practical remark
• Representatives from new/CEE countries have
  lower prices (Poland, Czech Republic, Romania,
  Baltic States etc.)
• Representatives from old/Western countries
  have more experience (DE, FR, UK, NL)

Protecting your knowledge and creativity, the
basis of your success.
11
12
EPC grant procedure- advantages

• Centralised grant procedure
• relatively fast
• relatively cheap (10-15.000 euro)
• reliable (EPO is one of the best searching and
  examining authorities worldwide
• highly skilled examiners ? thorough examination
  vs. prior art ? strong patent!)

13
EPC granted European patent

• After grant the European patent
• is published in the language of proceedings
  (EN/FR/DE) with claims translated into the other
  two official languages
• in order to take effect in selected Contracting
  States the patent has to be validated in those
  States.

14
EPC validation

• In the validation procedure, the European patent
  is transformed into a bundle of national patents
  in selected Contracting States.
• These patents are subject to national law. In
  particular, disputes arising from such patents
  are governed by national law.

15
EPC validation

• In most Contracting States, validation of
  European patent requires
• appointing a local patent attorney,
• filing a translation of the whole patent as
  granted into the official language of the State,
• paying national official fees.

16
Validation- disadvantages

• So we are back in the national systems, having
  paid a lot and having a bundle
• of independent national patents
• rights resulting from patent not necessary the
  same in each country,
• independent court proceedings in case of
  infringement...
• ...possibly with different outcome!

17
Remedies London Agreement- reduce translation
cost

• Improvement under London Agreement
• no translation at all patent valid
  automatically France, Germany, Ireland,
  Lichtenstein, Luxembourg, Monaco, Switzerland,
  UK
• translation of claims only Albania, Croatia,
  Denmark, Finland, Hungary, Iceland, Latvia,
  Lithuania, Macedonia, Netherlands, Sweden,
  Slovenia
• ...full translation still required in all other
  countries (including Poland)...

18
Remedies unitary patent(not yet in force!)

• In view of the common market in EU, it is
  important to improve the European patent system
  and make it more competitive and attractive
• turn European patent into a unitary right,
• form centralised Patent Court.

19
Remedies unitary patent

• European patent should form a unitary right.
• - applications filed with the EPO and patents
  granted by the EPO based on the EPC
• - unitary effect to be requested within one month
  from grant
• - in long term no translations after grant
  required (in 12 years machine translation should
  be good enough) before that translation into
  English.

20
Remedies European Patent Court

• Another important institution associated with
  European patent as a unitary right should be
  centralised court Unitary Patent Court
• competent in disputes resulting from European
  patents
• and whose judgements should be binding on the
  whole territory in questuion.

21
European unitary patent- territories

• European unitary patent will have the effect in
  countries, who
• - agreed to accept unitary patent regulations
• - agreed to accept and implement Unitary Patent
  Court regulations.
• In practice 25 of 28 EU countries (ES, IT, PL
  outside the system so far).
• Ratifications pending in 25 EU countries.

22
Thank you!