UNITARY PATENT Challenges for the EPO - Advantages for the users

1. UNITARY PATENTChallenges for the EPO - Advantages for the users Georg Artelsmair 6 September 2012

2. Unitary Patent - History • 1975: Member States agree on a Community Patent Convention • never ratified • 1989: Member States agree on an Agreement relating to Community patents • ratified only by DE, DK, FR, GR, LU, NL and UK • 2000: Commission presents proposal for a Council Regulation on the Community patent (failed) • From 1999 to 2006: Work on the draft EPLA - European Patent Litigation Agreement • From 2007 to 2009: Work on the draft Agreement on the European Patent Court

3. Unitary Patent – Legal instruments • Unitary Patent Protection (UPP, based on Enhanced Cooperation) • Regulationof the European Parliament and the Council on unitary patent protection, and • Regulationof the Council on translation arrangements • Implementing rules at the level of the EPO • Unified Patent Court (UPC) • Agreement on UPC (international treaty between EU member states)

4. Unitary Patent – State of play • Negotiations on the 2 draft Regulations on Unitary Patent Protection have reached an advanced stage • Parliament and Council are currently seeking a compromiseon a last outstanding issue (ruling of ECJ on substantive patent law) • Once a compromise will have been found • European Parliament is to adoptRegulation (Oct. 2012?) • Council is to adoptRegulation • Presidents of Parliament and Council are to sign Regulation (Dec. 2012?) • Diplomatic Conference to be convened for adopting the Agreement on the Unified Patent Court (Autumn 2012?) • Entry into force if ratified by at least 13 Contracting Member States, including DE, FR, UK (April 2014?)

5. Unitary patent protection – Basic concept • European patents granted by the EPO under the rules and procedures of the EPC should, on request by the patent proprietor, benefit from unitary effect in the participating Member States • European patents with unitary effect will co-exist with national patents and with classical European patents

6. The unitary patent as a European patent Unitary effect conferred to European patents after grant Same grant procedure as for a classical European patent Appeal proceedings Refusal or withdrawal of application Limitation Revocation Opposition proceedings European patent application European patent with unitary effect in the territories of the 25 participating MS On request of the patent proprietor Filing and formalities examination Substantive examination Grant of European patent Search report with preliminary opinion on patentability *) The European patent is deemed not to have taken effect as a national patent in the 25 participating MS *) The EPO delivers its search reports, including written opinion on patentability, in less than 10 months on average, and in less than 6 months for Euro-direct applications

7. Unitary patent protection - New tasks for the EPO • Registration of EP with unitary effect • Centralised post-grant administration, including the collection of renewal fees • Comprehensive post-grant Register

8. Unitary patent protection - challenges for the EPO and MS • To be prepared – Target datereferred to in Regulations is Jan. 2014! • Discussion with Member Statesin a new "Select Committee" of the EPOrg • inaugural meeting Spring 2013? • financial sustainability:costs for EPO, level of renewal fees, distribution to MSs • Proposals to be madefor new rules and procedures • registration of unitary effect • receiving annual fees • setting up Register • New and integrated IT systems

9. Unitary patent protection - options for the users • New option for patent proprietors • new "European patent with unitary effect" covering 25 EU Member States in addition to national patent and classical EP • Choice to be made after grantof EP by the EPO • EPC rules and procedures remain unchanged

10. Unitary Patent – Language arrangements • No translation requirement after grant (beyond Art. 14(6) EPC) • Patent translate: automatic machine translations for information purposes • Translation in case of a dispute • in the language and at the request of a court or of an alleged infringer • cost borne by the patent proprietor • Transitional measures: during a period of up to 12 years • Reimbursement of translation costs of patent applications (up to a ceiling) filed in official languages of the Union other than English, French or German

11. Unified Patent Court - Latest proposal • A specialised patent court common to the participating EU Member States dealing with disputes relating to • classical European patents and • European patents with unitary effect • Court of First Instance and Court of Appeal • Court of First Instance composed of • a Central Division as well as several Local Divisions and Regional Divisions set up in the participating Member States • Centralised Court of Appeal

12. Unified Patent Court Infringement actions Local or Regional Divisions European patent and European patent with unitary effect Court of Appeal Court of First Instance Central Division Revocation actions European Court of Justice in case of litigation Appeal on Matters of Fact and Points of Law Preliminary Rulings on Union Law

13. Present system High costs for patent proprietors post-grant translation costs national renewal fees Sub-optimal enforcement scheme multiple litigation diverging national decisions high costs legal uncertainty Future system European patents with unitary effect lower translation costs centralised handling Unified Patent Court harmonised litigation harmonised decisions lower costs more leagal certainty SUMMARY

14. Thank you for your attention Georg Artelsmair Director, European CooperationEuropean Patent Office, MunichTel: +49-89-2399 8989E-mail: gartelsmair@epo.org www.epo.org