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The European patent reform

An overview on European patents with unitary effect and the Unified Patent Court
by

András Jókúti

on 25 April 2014

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Transcript of The European patent reform

The European patent reform
Court of First Instance
Administrative Committee
Main decision making body composed of one representative of each CMS (+COM as observer)
Adopts
its own rules of procedure
the Rules of procedure of the UPC
financial regulations
level of court fees
rules on legal aid
staff regulations
rules on the EPLC (and other appropriate qualifications)
schedule for MS’ proportional contribution to a MS that has paid damages to a party in case of a violation of EU law by the UPC
Sets up local and regional divisions
General voting majority requirement: three quarters of the CMS represented and voting
Court of Appeal
Luxembourg
Transitional period
pending on the "availability of high quality machine translations" of patents into all official languages of the EU
sunset clause: max. 12 years, review every 2 years from year 6 („expert committee”, COM report, proposal of termination to the Council)
EPs granted in DE or FR: EN translation submitted with the request for unitary effect
EPs granted in EN: translation into any other official EU language submitted with the request for unitary effect
no legal effect, for information purposes only

Accompanying measures
Machine translations
available online, free of charge
no legal effect, for information purposes only
Compensation scheme
reimbursement of translation costs ("up to a ceiling")
for applicants filing in a non-EPO EU official language
entitled entities: natural persons, SMEs, non-profit organisations, universities and public research organisations located in the EU
request filed together with the request for the registration of unitary effect
lump sum (ca. EUR 500)
exceptional review in case of false declarations (refund and additional fee subject to the sanction of lapse)
General rules
Unchanged regime up to grant
No validation requirement (claims: EN+DE+FR; description: EN or DE or FR)
Translations in the event of a dispute
at the request of the alleged infringer to the language of the infringement pMS or the MS of the alleged infringer's domicile
at the request of the court to the language of proceedings
Court's "extra" consideration of non-availability of all language versions to bona fide infringers at claims for damages
Unitary effect
Select Committee
Set up under Art. 145 EPC and Art. 9 Reg.
Cooperation of pMS (within the AC)
pMS
COM as observer by virtue of the Reg.
other observers (epi, BusinessEurope, other EPC States)
Governance and supervision of EPO
Rules relating to unitary patent protection
Rules on the compensation scheme
Financial arrangements
Budgetary implications
Level of
renewal fees
paid after UPP
Distribution of a certain share of renewal fee income among pMS
Discussion of accompanying measures at national level
Unified Patent Court
European patent with unitary effect
Language arrangements for European patents with unitary effect
Regulation (EU) 1257/2012
Regulation (EU) 1260/2012
Agreement on a Unified Patent Court
C-274/11
C-295/11
C-146/13
C-147/13
Preparatory Committee
Main coordinating body before the entry into force of the UPC Agreement preparing decisions and making proposals for the future organs of the UPC
Working on the basis of the Declaration of MS made at the signature of the UPC Agreement
Composed of pMS representatives and observers (including the EPO)
own rules of procedure and Secretariat
website: Q&A, communication plan, consultations, roadmap (target date: end of 2015)
5 Working Groups (with coordinators and project teams)
Legal (DE)
Financial (FR)
IT (UK)
HR and training (HU)
Facilities (LU)
Registry
Mediation and Arbitration Center
Lisbon - Ljubljana
Substantive law on European patents
right to prevent direct use of the invention
right to prevent the indirect use of the invention
limitations of the effects of a patent
prior users' right
exhaustion of the rights
effects of an SPC
Classical European patents (opted out)
National patents
SPC?
Brussels I Regulation
Contact Committee
Entry into force
Linked with the Regulations' date of application
Triple condition (whichever is the latest)
Ratification threshold
min. 13 including UK, DE, FR
ratifying MS "at the date of registration" determine the territorial scope of unitary effect
Transitional period
7(+7) years
Proceedings relating to EPs and related SPCs may be brought before national courts
Opt-out
holders/applicants of EPs granted or applied for before the end of the transitional period and of related SPCs may opt out from the UPC's exclusive competence
only if no proceedings have been brought before the UPC
withdrawal is possible
Revision
Final and transitional provisions
enhanced cooperation under Decision 2011/167 (EU)
Registration of unitary effect may be requested for any EP granted on or after the date of application of the Regulation
Entry into force: 1 January 2014 or the entry into force of the UPC Agreement, whichever is the later
Unitary effect only covers those pMS where the UPC has exclusive jurisdiction regarding EPs with unitary effect "at the date of registration"
European Patent Office
Administration of unitary patent protection
administering the requests for unitary effect
maintaining a Register for EPs with unitary effect
registration of licenses of right
publication of translations in the transitional period
collecting and administering UPP renewal fees
compensation scheme (+machine translations)
judicial review of EPO decisions on UPP
Entrusted with the tasks by MS via the Reg.
Supervised by the Select Committee
National implementation
impact assessment, consultation
referendum, constitutional scrutiny
amendment of national law
patent law
preventing double protection if unitary effect is registered
allowing for simultaneous protection by national and European patents
compulsory licences
validation after final rejection of registration of unitary effect
issue of the "growing" coverage of UPP due to ratification between the grant of an EP and the registration of unitary effect
effect of later discovered national prior rights
civil procedure
legal status of judges
Prosecution of EP applications is unchanged up to grant
Unitary effect may be registered for EPs granted with the same set of claims for all pMS
Registration may be requested within one month from grant
Unitary character: uniform protection and equal effect in all pMS (except for UPPs with different coverage and the aspects governed by national law)
EPs with unitary effect may only be limited, transferred or revoked, or lapse in respect of all the pMS (licensing is possible with different coverage)
EPs with unitary effect take effect in pMS on the deemed grant date, pMS shall prevent double protection (if validated)
the patent as an object of property shall be governed by national law (determined by the residence/place of business of the applicant, or, if it's not in a pMS, by the headquarters of the EPOrg.)
Uniform protection and limitations with indirect legislative reference and through harmonization by international law (political reason: preventing the CJEU from adjudicating on substantive patent law matters)
Licences of rights (statement for a reduced renewal fee)
Final and transitional provisions
Central division
seat: Paris
thematic cluster (pharma): London
thematic cluster (mechanics): Munich
direct actions for revocation and actions for declarations of non-infringement shall be brought here
potential referral of a counterclaim for revocation (or the whole case) from a local or regional division
proceedings in the language of the patent
Regional divisions
Court of Justice of the EU
reference for a preliminary
ruling in EU law matters
International court common to Contracting (EU) MS
Jurisdiction
to adjudicate cases relating to
"classical" EPs
EPs with unitary effect
EP applications
SPCs granted for EPs and EPs with unitary effect
Competences
infringement (and related defences)
revocation (invalidity)
declaration of non-infringement
provisional and protective measures
counterclaims
prior users' rights
compensation for licences of right
review of EPO decisions relating to UPP administration
Effect of decisions
extends to the territory covered by unitary effect or the validations (within the jurisdiction of the UPC)
Legally qualified
judges
, technically qualified judges, "pool of judges"
Panels
of multinational composition
Mixed fee system
Budget Committee
Local divisions
(max 4 per MS,
depending on case numbers)
Advisory Committee
Training Center
Budapest
panels of 5 judges
language determined by the first instance proceedings
panels of 3 judges
composition depends on case numbers
language rules
András Jókúti
Representation
Entitled persons for professional representation
Lawyers who can act before a CMS court
European patent attorneys with
a European Patent Litigation Certificate (EPLC) or
other appropriate qualifications
patent attorneys may only assist entitled representatives (and speak)
List of entitled EPAs kept by the Registrar
No obligatory professional representation in proceedings challenging an EPO decision in UPP administration matters
19 February 2013: signature of the UPC Agreement
24 MS including IT
ES is not signing (+challenged the Reg’s at CJEU)
BG’s signature was delayed but happened later
PL takes the „wait and see” approach (based on IA)
HR intends to join after accession

Presidium
composed of renowned patent judges and practitioners
tasks:
pre-selection of judges
proposals in the training framework
opinions on "appropriate qualifications" of EPAs
Registrar
sub-registries
Full transcript