Posts by: Eva Carlsson | (2) posts

The new unitary patent opens many opportunities

One of the most significant issues within the European patent industry concerns the unitary patent and the courts which will belong to the new system. In December 2012 the EU made the historic decision on introducing a new patent system, but many detailed issues still need to be resolved.

The current system, the European Patent Convention (EPC), will continue in parallel to the new system, the Unitary Patent (UP), which is expected to be introduced in early 2016. There are no intentions of scrapping the old system. The EPC also covers European countries which are not a part of the EU.

It may seem strange and complicated that you can get national patents within the EU and at the same time have the possibility of patents which cover all of the EU. But looking at the work with trademarks, the duality has existed for a long time and it works perfectly fine.

If you only have operations in a few small EU countries, you might choose to submit an application in accordance with the EPC, and then later decide whether you want the application to result in a unitary patent for the EU or national patents in a few selected countries, as was previously the case. It may very well be the case that initially you choose the old system, as you understand it and feel comfortable with it.

Three main courts

The Unified Patent Court (UPC) cannot be applied until everything involving the courts has been completed. Of course it is not possible to introduce a regulatory framework for a new kind of patent, if there is no body for dispute resolution.

Three main courts, London, Paris and Munich, will be responsible for the different technology areas. Each of them will be the final legal body for their technology area. In addition, a number of regional and local courts will be established.

The new system covers two regulations; one which covers the patent itself and one which covers which language will be used. There is also an agreement which covers the courts. Three of the EU’s member countries have not yet fully approved the system. Italy and Spain have declined the patent part, while Spain and Poland have declined the court. Denmark will have a referendum on the court on 25 May.

Time and costs

One of the major benefits of the new system is time. It should take maximum one year to resolve a dispute. It will be a large difference compared to now.

The time aspect also means that you need to be quick. If you receive an application for a summons, then you do not have a long time to reply. In order to fulfill the requirements, you need to have good relations with a competent counsel who is well-versed with the new judicial proceedings. You need to act directly; you do not have a lot of time to deliberate.

An important objective of the EU in terms of the new system is that it should be cheaper to obtain patents. In some situations, the level of costs may be lower. The costs of applications are likely to end up at the same level as now. But the national completion will probably be cheaper, as validation of a European patent under the EPC in the desired countries has traditionally been fairly expensive. The new system, the UP, automatically covers more countries. Depending on which level is determined for the annual fee for the unitary patent, it may also be cheaper per country to have a unitary patent, than choosing a number of individual countries in accordance with the old system.

The total cost depends on the price levels determined by the EU. The level of the annual fee is crucial and is presently under discussion. The question is how it will impact the patent portfolios, primarily which age they will have. Perhaps more countries will be covered by patents for a certain invention, but the patent will probably be maintained for fewer years.

It will be possible to use the new system in combination with the existing one in a flexible manner. To navigate in this field, a profound knowledge of the systems is necessary, and a strategic approach is desirable.

Uniform action from non-European countries

There is a general consensus that American, Chinese and Japanese companies, as well as large companies in general, will use the UPC to a large extent. They tend to see Europe as one entity, and with the new system they cover the entire EU and do not need to think about whether they should obtain patent protection in only a few selected countries.

If it ends up that way, the market will be more challenging for small players. But the opportunities of obtaining a license for the patent may then increase in the countries where patent holders do not themselves want to act. In the authority registers, where the unitary patent will be included, you should be able to add that you are willing to give licenses to others (license of right), which in that case is rewarded with the patent holder having to pay a lower annual fee. This is completely new.

Eva CarlssonEuropean Patent Attorney
Anita Gillior, Attorney at Law

2 years to file EPC divisionals

The European Patent Office has decided to restrict the possibility for filing divisional applications. Under the current Rule 36 EPC a divisional application may be filed up to the grant of the parent application.

According to the adopted amendments to Rule 36 (1) EPC the applicant has a basic right to file one or more divisional applications up to two years from the date of the first communication from the EPO Examining Division. And if the EPO at a later stage raises an objection of lacking unity of invention that objection initiates a new two year term for filing divisional applications, provided lacking unity had not previously been raised.

A special “grace-period” applies to existing EP applications where the applicant may file divisional applications under the present rules until September 30, 2010.

An EP application may cover up to 38 countries so the consequences of the restricted possibilities for filing divisional applications are considered quite severe by many applicants, especially in technical areas like biotech.
Applicants have to decide whether a divisional application is to be filed as a matter of precaution. If the invention is considered important we recommend the filing of at least one divisional application.

Eva Carlsson, European Patent Attorney