March 15, 2013 AIPLA- epi meeting, Munich

1. The unitary patentThe European patent with unitary effect in the participating member StatesMihaelaTEODORESCUepi Vice-President March 15, 2013 AIPLA-epi meeting, Munich

2. 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

3. 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

4. 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

5. 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

6. 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

7. 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 ES IT CH NO TR etc... unitary effect in non-participating outside EU 25 Member States March 15, 2013 AIPLA-epi meeting, Munich

8. Validation • No formality beyond the request for unitary effect. but ... • Transitional provision (during 6-12 years): -One full (human) translation to accompany the request; -Englishtranslation if the unitary patent is not in English; -Else translation in any official language of the EU. March 15, 2013 AIPLA-epi meeting, Munich

9. 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

10. 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

11. 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

12. 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

13. Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent OfficeInstitut des mandataires agréés près l'Office européen des brevets Thank you for your attention! March 15, 2013 AIPLA-epi meeting, Munich