 Through three main channels

 Patent application filed directly with each country (national

filings)

 International Patent application under PCT

 Regional patent through EPO (European Patent)

 How to file PCT and EPO applications?

 Unification- Current European Patent is not unified

 Wide variety of national laws and regulation apply

 Two proposals to advance EP system within EU

 Fragmented European patent system has negative impact
on
 Innovation, growth and the competitiveness of European business

 They have to at par with USPTO and JPO

 Over 40yrs EU members- several conferences and

international agreements
 Aimed at creating Unitary Patent System valid throughout
European countries

 EP Organization outcome of EPC was significant milestone

 Cost and Uncertainty Regarding European Patents
 High cost in all 27 EU members and 38 EPC countries

 Classical EP- Renewal fees to national offices is 15 times

higher than USPTO

 US & Japan- single patent application

 Unlike US &Japan- after grant of EP inventor must validate

the patent in EU States

 Process of validating- costly & difficult

 For eg- total cost of validating EP in France, Germany & UK- 680
Euros
 In 13 countries- 12,500 Euros & in all 27 countries- 32,000 Euros
 Infringement and revocation proceeding at national courts
 Different interpretations of EP law
 Several issues on Judicial Enforceability
 National patent litigation makes multiple jurisdiction
 Increases litigation cost
 SMEs is prone to this litigation cost and risky multi-forum
litigation

 Absence of a central patent court

 EP is litigated individually in each country where patent is in
force
 Parallel litigation of same patent in different national courts

 Which all affects the efficiency of the EPO

 Due to above stated issues, there is strong desire for

Unitary Patent System throughout Europe
History:
 The Paris Convention, 1884
 1st international treaty address IPR across international borders
 Modern-day multinational protection for IP
 First attempt to harmonize patent law throughout Europe

 Rights of N.T

 Right to priority

 Shortcoming- member states did not make any significant

concessions regarding harmonizing substantive patent law
1) The European Coal and Steel Community Treaty-
1952:
 After WW II- necessity to reconstruct EU economy
 Aim- “contribute, through the common market for coal and
steel, the economic expansion, growth of employment and
a rising standard of living”

 Ensuring free movement of products & prohibit

restrictive trade practices

 Evidences- early awareness by EU leaders that peace,

economic expansion, employment, IP protection and
free flow of goods
2) The European Economic Community Treaty – 1958:

 Harmonious development of economic activities

 Continuous and balanced expansion

 Increase in stability , and accelerated raising of the

std of living

 Due to success of EEC, European countries decided to

harmonize their economic activities throughout the
Europe
 The EU was established by this treaty, signed on
7th Feb 1992

 Developed,
 Single currency

 Established freedom of movement of goods, services,

people and money b/w member states

 Promotion of scientific and technology advances

 UPS has ensured all the objectives later

 After establishment of EEC, the council initiated 1st major attempt
to harmonize substantive patent law throughout EU

 In 1963, 13 member countries negotiated the Convention on the

Unification of Certain Points of Substantive Law on Patents for
Invention

 Objectives:
 To harmonize substantive patent laws- Creation of international patent
 Assist industry and inventors
 Promote technical progress

 1st significant effort by European countries to harmonize patent law

 Opened for signature on 27th Nov 1963 and did not EIF until 1st Aug
1980- ratified by only 8 countries and 13 countries parties to it
 Strasbourg Treaty is the - Blueprint for EPC in 1973

 EPC is another notable effort to created European patent

system

 Currently 38 European countries are parties to it

 Include all 27 EU members and 11 countries not in EU

 Lead to creation of EP Organization

 Authority to grant European patents
 Introduced standard rules governing European Patents

 Inventor files single patent application with EPO

 Inventor can validate the patent in each contracting state

separately
 EPC established uniform requirements for filing,
prosecution, opposition and appeal of EPO decisions

 Foundation for eventual unification of substantive patent

law throughout Europe

 Shortcoming- EPO did not replace national patent offices

 EPC member states not obligated to amend their national

patent laws to conform to EPC patent provisions

 EPC members retained authority over European patents

after validation
 Determine patent validity, post grant infringement, damages,
enforceability

 Further attempts of unification of EU patent system

struggled to build upon the success of this unifying treaty
 9 countries signed this CPC but it never CIF

 Main goal:
 To created unitary and autonomous European patent
 Single unitary and autonomous protection right

 It is developed in conjunction with EPC and EEC

 If enacted- patents issued by EPO automatically effect

throughout entire European

 Prepared uniform rules governing unitary and autonomous

effect of EP

 Similar to EPC, this CPC also not require member states to

change their national patent laws
 Luxembourg Conference (1985), EEC, EC and other
international organization were eager to conclude
the CPC

 To this end, CPS was signed by all EEC members

 Due to ‘constitutional and political problems in some

member States’ only 7 countries ratified CPC
 But never CIF

 Main obstacle for the ratification is Translation

provisions

 CPC is an another bold leap forward for creating UPS

 But suffered the same fate
 Another initiative impact patent applications throughout
the globe

 Began in the late 1960s

 Signed in Washington, DC on 19th June 1970 by 20 countries

initially

 EIF on 24th Jan 1978 and all EEC members are party to the
PCT

 Total 146 (June 2012) As on now……

 PCT allows inventor to file a single international patent

application

 Member states to accept PCT applications as national

applications
 PCT doest not interfere with granting or post granting
validity of patents, infringement and enforceability

 PCT is an imp milestone in international patent co-

operation

 But, it had only little impact on advancement of

community patent in Europe

 Because, EU had already established a regional patent

process to file single patent application with the EPO
  Protocol on the Statute
 14yrs after CPC, EC met once again in Luxembourg
regarding community patent

 This agreement amended CPC by incorporating new system

of litigation concerning the validity, effects and
infringement of Community patents

 Supplement with three protocols

 Protocol on settlement of Litigation
 Create CP courts of 1st and 2nd instance
 Also to establish Common Appeal Court with an independent legal personality
 Protocol on Privileges and Immunities
 This agreement also never come into force,
because 2 main reasons,
 The excessive cost to applicants – for translation to
official language of every EEC country

 Complex judicial system, which would declare CP invalid

and that decision would effect throughout the EC
 Influenced the harmonization of European substantive
patent law

 Member States to ‘implement in their law more extensive

protection’

 Term of patent- 20yrs

 No discrimination based on place of invention and field of

technology

 All EU members are parties to the TRIPS

 Obligated to ensure their patent laws are in compliance

 Shortcoming- only minimum protection and no uniform

system of protection
 EPLA- proposed by EP Organization sub-group of the
working party on litigation

 It is an optional protocol to EPC

 Aim- ‘remedy the shortcomings of the present purely

national litigation system of EP’

 EPLA would establish a ‘European Patent Court’

 Deal with infringement and revocation action issued by EPO

 European Patent Court:

 CFI
 A central division
 Number of Regional Divisions
 Court of Appeal
European Union’s Lisbon Strategy- 2000:
 Lack of CP was subject to EC’s meeting in March 2000,
Lisbon

 EC called for creation of Community-wide patent

protection by end of 2001

 Based on the decision- European commission proposed an

EU regulation for a Community patent in August 2000
 Now EU Unitary Patent Regulation (UPR)

 The proposed EU- UPR is founded on the CPC and 1989

Agreement

 In 2003 several revisions to arrive at a compromise

 But EU working group failed to reach on agreement on

translation claims
 Negotiation regarding the proposed regulation stalled and
a final agreement was never reached

 On 3rd April 2007 European Commission adopted

Communication Enhancing the Patent System in Europe
 Vision to make EU Unitary patent a reality
 To improve European patent litigation system

 Purpose is to reinvigorate Patent reform debate and

suggest new avenues for
 UPS
 UPC
 The convention of the Grant of European Patents
(London Agreement) was an initiative of an EPO
 This was concluded on 17th Oct 2000 but did not EIF till May 1,
2008

 Out of 27 EU members States,

 Only 12 EU members are parties to it
 13 others are agreed either dispense entirely with translation
provision
 Italy and Spain are not parties to it
 Both opposed because they want to file patent applications in

their national language

 Three Proposals
 Two regulations (Unitary
Patent Protection) and
one Agreement (Unitary
Patent Court)
 1st : EU enhanced
cooperation procedures- to
pass EU Regulation on
Unitary Patent Protection
 2nd : Unified Patent Court
(Draft) Agreement
 The Regulations entered into force on 20
January 2013, and are applicable from 1
January 2014, or

 The date of EIF of the UPC Agreement

 whichever is the later
 It will enter into force on 1 January 2014

 or after the deposit of the 13th instrument of ratification or

accession
 On 4th Dec 2009, Council of EU adopted this proposed regulation

 Patent protection in all EU countries by submitting single patent application

to the EPO

 The procedure of examining, criteria and others rules are same as in EPC

 The difference is post-grant phase

 Problems associated with translation regime

 After long discussion and considering various options

 European Commission adopted proposal for translation regime

 Which chose English, French and German as an official languages of EPO

 If submitted in any other languages- Application will be translated into one of the official
languages
 Majority of EU members supported this proposal but Italy
and Spain objected it

 To overcome this stalemate- EC at request of 12 member

states use of EU enhanced cooperation legislative
procedure
 Which allows for approval of EU legislation without consent of all
27 members
 Laterly other 13 additional EU members also joined

 On 10th March 2011, council adopted a decision to create

UPP

 Italy and Spain filed complain with CJEU challenging the

use of enhanced cooperation procedure
 Seeking to annul the decision of EU council
 If the proposal becomes law, than cost of obtain EU-Wide
patent will decrease from around 32,000 Euros to less than
2,500 Euros
 During transition period- 680 Euros

 EU Patent Package has not yet come into force

 Expected to be ratified by all the contracting member

states sometime in 2015 or 2016

 There will be significant changes to European Patent

System if it does come into force
 Unitary patent is a "European patent with unitary effect“

 The unitary patent has unitary character with unitary

effect for the territory of the 25 participating states

 Post-grant registration of unitary effect on request of the

patentee

 Single EPC procedure for European and "unitary patents"

 Application and examination procedure will remain

unchanged

 Will be limited, transferred or revoked in all participating

member states

 EPO is solely responsible for granting UP

 Licensing, collection of renewal fees, disbursement of fees
Source: EPO (Espacenet)
 Application and examination procedure for Unitary Patents
are same as for European patents (until Grant of patent)

 The main diff b/w UP and EP will be in the Post-Grant

phase.

Registering a unitary patent:

 File a unitary patent application- applicant will need to file

for EP with EPO and register for unitary effect during post-
grant phase of prosecution

 Basic requirements
 Patent proprietor has to file the request for unitary patent
protection with the EPO
 in writing
 in the language of proceedings (English, French or German)
 no later than one month after the mention of the grant is
published
  Unitary effect can only be requested for European
patents which were granted
 with the same set of claims
 in respect of all the participating states
 Translations only have to be filed during a transitional
period (Upto 12 years)

 Effects of the registration

 Unitary patent does not revoke or replace European
Patents or national patents within the member states
 Current member states - 25

 Italy (IT) and Spain (ES) intend not to participate in the

Unitary Patent protection (however Italy has signed the
Unified Court Agreement)

 EPO members outside EU are not within this agreement

 Switzerland, Turkey, Norway and Iceland
 One-stop-shop: centralized post-grant
administration by EPO
 requests for unitary effect
 Register for unitary patent protection
 receiving/registering statements on licenses of rights
 collection/distribution single renewal fees
 reception/publication of translations during transitional
period
 administration of compensation scheme for translation
costs
 Builds on EPO language regime (Art 14(6) EPC) Reliance on
EPO machine translations

 Transitional provisions

 Compensation scheme for the filing of applications in one

of the official EU languages that is not an EPO official
language
 Reimbursement: EU based SMEs, natural persons, non-profit
organizations, Universities, public research organizations
 In any official language other than those three- cost reimbursed
 UP will automatically be valid for all participating EU states.

 Single Patent application and avoid multiple litigation

 Less cost effective

 Encourage SMEs, NPOs, Universities

 Easy maintenance of a Unitary patent by paying all annuities to

EPO.
 Reduction of the renewal fees

 According to the European Commission, a Unitary Patent may cost just

€ 4,725 Euro compared to an average of € 36,000 needed today

 No further translations will be required beyond those required by

the EPO before grant.

 Transitional provisions, however, will apply until high quality

machine translations are available
 Difficult to predict the impact

 The integration with other means of patenting

 UPS will not change the current manner of filing and also PCT
application

 The cost of obtaining a unitary patent

 Welcome change-

 The effect of national laws on the enforcement of UP

protection
 Art 69 of EPC interpreted according to national precedent
 Change in the structure of court system- CFI, CoA
 Greatest contrast b/w claim interpretation standards in Europe is
demonstrated by diff b/w English and German approaches
 English courts construe – Peripheral claiming (plain meaning)
 German courts- central claiming (narrow scope of protection)
 Issues of prior user rights, and compulsory licenses are remain
fragmented
 The possibility of forum shopping
 Multinational patent litigation

 Arbitration proceedings

 International effect of licensing

 Under EP system- licensing is difficult

 By filing UP application owner may escape ongoing

maintenance fee
 US applicants will have an effect on future filings and
proceedings

Predicted Effect:
 US applicants will have another tool for protect their
IP in EU

 UPS nail for peripheral claim interpretation

 US practitioners need to become more familiar with this
interpretation

 Broader protection may lead to more litigation

threats
 EPO Patent filing statistics in 2013
 By EPO members States– 35%
 USA- 24.5%
 Japan- 19.7%

 Data of EPO Biotechnology patents from non EU

countries are stronger

 Classical EP- EC Directive 98/44/EC

 Legal protection of biotechnological inventions

 Two aspects- bifurcation and injunction create abuse

of the UPS
 Patent infringement and validity are heard separately
 Injunction – patent assertion entities (PAEs) patent
trolls
 Negotiating power to force excessive settlements from
other companies

 Proposed UPC do not provide sufficient guidelines on

such issues
 PAE cases are already growing battlefield in USA and EU

 Impact of PAE on BT industry is on functional claims

 Forum shopping may influence such type of litigation

 Overall, UPS will likely have a positive impact on
applicants

 Negative aspect also logically follow

 European businesses are at disadvantage in global market

because of fragmented patent system

 The possibility of UPS and UPC raises many important

questions.
 Will the unitary patent be uniformly enforced?
 Will the Europeans give full faith and credit to their neighbors?
 Will the new regime decrease costs?

We will have to wait for the better times!