european unified patent tomorrow”… or 2017 or … unified patent “tomorrow”… or 2017 or...
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European Unified Patent “Tomorrow”… Or 2017 or 2018?
The EU treaty documents have been signed!
The EU treaty documents have been signed!
Several announcements from London and the East Coast have trumpeted
the possibility of the new EU patent coming into effect as early as 2014. An
optimistic note was sounded today in the IPO Daily News (attached).
Naples Institute No chance for 2014: 2017? 2018? Early German
ratification (a condition precedent to the “unified” system coming into being)
is most unlikely under the mainstream German experts’ view expressed at
the Naples Midwinter Patent Experts Conference.
Attached are the report in Intellectual Property Watch and the Naples
PowerPoint presentation (both attached).
Regards,
Hal
From the IPO Daily News:
EU COUNTRIES SIGN AGREEMENT FOR UNITARY PATENT AND UNIFIED
PATENT COURT -- Yesterday 24 of the 27 EU member states signed an agreement for the
Unitary Patent and Unified Patent Court. Both the Unified Patent Court Agreement (treaty) and
Unitary Patent regulations that already had been approved by the EU Council and Parliament
will take effect after ratification of the agreement by 13 EU member states, including France,
Germany and the UK. Timing for ratifications is unclear. A surprise was that Italy—which had
previously been opposed—signed the agreement. Bulgaria, Poland and Spain did not sign, but
Bulgaria is expected to sign soon.
February 20, 2013
Wegner, Harold C.
From: Wegner, Harold C.Sent: Friday, February 08, 2013 7:26 AMSubject: The EU "Unified" Patent, Now -- or 2017 or 2018?Attachments: EUUnifiedPatentFeb9.pdf
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By now, everyone involved in patent management has a good grasp of the procedures of the new EU “Unified” patent system. The practical realities for business persons is set forth in the attached PowerPoint: The EU “Unified Patent” System: Business Considerations for American and Asian Patent Organizations. An EU Patent System Effective Date in 2017 or 2018? Among the factors not widely considered outside Germany is the intensity of the concerns over this new system within Germany and the possibility that this country may veto any early implementation be refraining from early ratification; one expert predicted a start date for the new system in the time frame 2017-2018.
The Naples Midwinter Patent Law Experts Conference: The presentation is based upon a panel discussion at the Naples Conference; the panel participants and audience are thanked for their contribution to this effort. Save the date: The Second Annual Conference is now scheduled for February 10-11, 2014.
Regards,
Hal
Wegner, Harold C.
From: Wegner, Harold C.Sent: Friday, February 15, 2013 8:45 AMSubject: European Union "Unified" Patent (con'd): Signing Ceremony in Brussels next Tuesday, Effective Date
Late 2015, 2016... or Beyond
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Yesterday, writing in INTELLECTUAL PROPERTY WATCH, Dugie Standeford updated the status of the European Unified Patent, including remarks by leading German expert Prof. Dr. Heinz Goddar from the Naples Midwinter Patent Experts Conference: He predicted that the ratification process for Germany (necessary as a condition precedent to the system coming into force) will not take place until at leastlate 2015 or 2016. Regards, Hal From Intellectual Property Watch (February 14, 2013) EU Unitary Patent And Court Are Here. Or Are They?
By Dugie Standeford for Intellectual Property Watch
As several countries prepare to sign an international agreement establishing an EU unified patent court, debate still rages over whether the concept of the court, and of a single EU patent, is actually feasible. Some say a unified patent in the near term is a “dead letter,” while one patent lawyer believes that while some technical issues remain, the system will spring into life in the not-too-distant future.
The Council of the European Union announced on 14 February that a signing ceremony for the international agreement for an EU unified patent court will take place in Brussels on 19 February. In order for the unitary patent to come force, 13 countries, including the UK, France and Germany – the three member states in which the highest number of European patents took effect last year – must ratify it, a European Commission source said. Those three are set to sign and the EC is confident that they will then ratify the agreement, the source said. The package also includes two regulations, one on unitary patent protection, the other on translation arrangements.
According to an 11 December 2012 FAQ on the patent reform package, http://europa.eu/rapid/press-release_MEMO-12-970_en.htm the signing launches the national ratification process and the preparatory work for setting up the unified patent court. The European Patent Office (EPO) will begin work on the procedures for the unitary patent.
If the court agreement isn’t ratified by all 25 member states participating in the “enhanced cooperation” under which the system was agreed to (Italy and Spain so far have opted not to join), the pact will only be effective in those nations that have ratified it, the EC said. In addition, the unitary effect of a European patent will only extend to those countries which have approved the court agreement, it said.
“Dead Letter”?
At a 4-5 February Midwinter Patent Experts Conference in Naples, Florida (US), Professor Heinz Goddar argued that a unified patent won’t happen in the short term because German ratification has been deferred until after the next national general election, set for September. The new government will then have to take up the work on the whole patent package again, so won’t begin ratification before the end of 2014 or possibly not until 2015, Goddar told Intellectual Property Watch. That process will take at least a year, so couldn’t be done until late 2015/early 2016, he said. That means hat since ratification is needed from at least the UK, France and Germany, the whole package won’t become effective until 2016/2017 or later, he said.
But Hogan Lovells (Düsseldorf) patent attorney Clemens Plassmann disputed those predictions, saying in an interview that they’re unjustified. “This is going to fly,” and there’s no reason to believe that the ratification process will kill it, he said in an interview. Ratification could happen as soon as next year, with even Italy and Spain joining, he said. The German government has indicated that it will sign and ratify the agreement this year, either before or after the election. Chancellor Angela Merkel is anxious to showcase her track record of achievements, and the other political parties largely share her government’s view of the need for the EU patent regime, he said.
Who Needs an EU Patent?
“There is serious doubt as to whether there will be any major use” of the new system, Foley & Lardner LLP Partner Harold Wegner said in a 16 January email. Very few patent seekers will need protection in all 25 countries, and those who do will be “skittish about putting all their EU patent eggs in the unified patent basket with a winner take all single court proceeding for the entire territory by an as yet unnamed judiciary,” he said.
If Germany, the UK and France, which have the largest number of patents in force, controlled the evolution of the new regime, “one might have a fair degree on confidence that applicants would use the new procedures to a certain extent,” Wegner wrote. But once those nations and 10 more have ratified the agreement, the ground rules will be determined to a great extent by an overwhelming majority of counties with minimal patenting activity, he said.
Judging by the talk on the market and companies that depend on enforcement of intellectual property rights, it is mainly a few large pharmaceutical companies that are reluctant to put patents at stake EU-wide, Plassmann said. Some players are taking a wait-and-see approach, he said.
Another critical question is the overall financial sustainability of the new system, EPO Principal Director, Patent Law and Multilateral Affairs Margot Fröhlinger said in a January 2013 slide presentation. The EPO will have new tasks and a revised compensation scheme. The level of annual patent fees must be set, because the new regulations only set broad criteria, she said.
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Questions also linger about when and under what circumstances the ECJ will have jurisdiction in unitary patent cases, said Plassmann. Some say the regulations will continue to allow the EU high court to take up substantive issues, while others claim it will be shut out, he said.
And there are still technical hurdles to overcome, Plassmann said. Patent court judges will have to deal with language issues, new rules of procedure and a system that is a hybrid of various jurisdictions’ laws, he said. There could be a convergence of the UK and Continental judicial systems, he said.
Court Challenges
Another wrinkle is that Spain and Italy are seeking annulment of the other 25 governments’ decision to authorise “enhanced cooperation” as the legal basis for the unified patent package, and that similar challenges are likely to be brought in the court regarding the regulations on unitary patent protection and translation arrangements, the EPO said.
ECJ Advocate General Yves Bot addressed all the issues surrounding enhanced cooperation in an 11 December 2012 advisory opinion, Plassmann said. Moreover, ECJ judges made it clear during oral argument that they believe that if the majority of EU countries think enhanced cooperation is the right way to go, they should be able to pursue that path, he said. (The court generally follows its advisors’ opinions but is not bound by them). It’s not clear what Spain’s new grounds for appeal will be, he said.
A fair way to view the new system is as an additional option for patent-seekers, Plassmann said. They will be able to choose a national patent, a European patent without the unitary effect, a European patent with unitary effect, and so forth, he said. Some may opt not to apply for a single EU patent, at least preliminarily, but they will be monitoring development, he said. Some big pharmaceutical companies may never come around to it, but small and medium-size businesses could benefit from the unitary patent for their innovative products, he said. Overall, the new system offers interesting options for everyone, Plassmann added.
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Naples Midwinter Patent Law Experts Conference
The EU “Unified Patent” System Business Considerations for American and
Asian Patent Organizations
Harold C. Wegner Foley & Lardner LLP
February 9, 2013
`
Table of Contents – Overview Detailed Table of Contents 3
About this Paper 4
Summary of Conclusions 5
Detailed Discussion 11
Second Naples Midwinter Patent 35
Law Experts Conference (2014)
About the Author 36
`
Detailed Table of Contents
• Retroactivity 12
• Elections, “Opt In”, “Opt Out” 13
• Final Ratification Years from Now 14
• Constitutional Challenges at the ECJ 16
• The Administrative Council 17
• Composition of the Appellate Court 22
• Parallel National Filings 26
• Balkanization Among the EPO States 30
`
About this Paper This paper assumes a basic knowledge about
the theory of the EU “Unified Patent” system.
This paper is based upon a panel presentation including Prof. Dr. Heinz Goddar, Dr. Shoichi Okuyama and Prof. Paul Cole moderated by this writer at the Naples Midwinter Patent Law Experts Conference (see slide 35). The conclusions reached in this summary are those of the writer.
Summary of Conclusions
• The EU Unified Patent System may come into force in several years, probably not earlier than in 2016, possibly only 2017 or 2018.
• When in force, the system will be retroactive for EPC patents granted after the effective date.
• Applicants will be able to “opt out” of the system at any time for a period of at least seven (7) years from the effective date.
Summary of Conclusions
Will Germany block entry into force through delayed national ratification?
• German ratification goes to the heart of when and whether the system ever comes into being as German (and French and British) ratification are conditions precedent to the EU Unified Patent System coming into effect.
• German ratification in the near term appears impossible and thereafter will be difficult and in any event delayed for some time.
Summary of Conclusions
Will Spain and Italy block implementation through a successful Constitutional challenge?
• An existing Constitutional challenge by Italy and Spain is now pending before the European Court of Justice where the Advocate General has advised the Court to rule against the challenge; the Court gives great weight to such an opinion.
• A fresh Constitutional challenge is being launched shortly by Spain that, if successful, would kill the EU Patent System in its present form.
Summary of Conclusions
• The patent maintenance system will be very expensive if one calculates costs based only on the three to five most important countries.
• The great projected expense is due to the requirement that each Member State receive a “minimum” payment of the maintenance fee, and that minimum will be set by the Administrative Council dominated by smaller countries.
Summary of Conclusions
• The patent litigation system will be very expensive vis a vis the German national system, even without taking into account the “loser pays” aspect of the German system.
Summary of Conclusions
• Patent litigation outcomes will be determined by first and second instance courts with a multi-national panel in each case.
• A significant numbers of judges will be coming from countries which are anti-patent.
Retroactivity
• The new “EU Patent System” will be retroactively open to patent applicants with pending applications.
• The election will be made as part of the grant process.
• Applicants will elect whether to be a part of the unified patent or to stay out of the system.
Election, “Opt In” and “Opt Out”
• Anyone who “opts out” of the system can at any time thereafter “opt in”.
• Applicants wishing to take a “wait and see” approach may wish to “opt in” and then at a later date “opt out” if problems are seen with the system.
Final Ratification Years from Now
• German (and each of French and U.K.) ratification is a condition precedent to the EU Patent System coming into being.
• Thus, it doesn’t matter whether all other 24 EU Patent System states ratify the agreements if Germany doesn’t go along.
Final Ratification Years from Now
• Some outside Germany have been predicting that the “EU Patent System” will be operational by January 1, 2014, while many outside Germany are giving a 2014 or 2015 start date.
• Factors within Germany make it more realistic to assume that the starting date will be much later, with one prediction having been made that the German ratification process will not be completed until at least 2017 or 2018.
Constitutional Challenges at the ECJ
• Spain has announced a new challenge that will be filed at the Court of Justice of the European Union in Luxembourg that challenges whether the EU Unified Patent System is within the framework of the treaty foundation of the European Union.
• This new challenge is in addition to the currently pending governmental challenge brought by Spain and Italy.
The Administrative Council
• The Administrative Council of the EU Patent System is dominated by the majority of countries where patents are relatively unimportant.
• Only three states have large numbers of patents that are maintained; the average for Germany, France and the United Kingdom is over 470,000 patents in force.
• At the opposite end of the spectrum, fully sixteen (16) states have less than three (3) percent of the German-French-U.K. average:
The Administrative Council
• It is specifically provided that an unspecified “minimum” maintenance fee payment will be made to each country, no matter how little that country spends on maintaining the patent system.
• The collective “minimum” payments are expected to be very high even for Member States that do little or anything to support the patent system:
The Administrative Council
• Since over sixty (60) percent of the Administrative Council is made up of delegates from States having less than three (3) percent of the number of patents in force for the Big Three, it can be seen that many countries will do very little to earn their “minimum”, and that the Administrative Council will set a relatively high fee for the “minimum”, particularly when applied to all the countries of the system.
The Administrative Council
• The European Parliament has touted cost maintenance fee savings as a major benefit of the EU Patent System, but this is based upon the false assumption that applicants will want patent protection in all 25 EU patent states.
• The EU Patent System will be very expensive if one calculates costs based upon the three to five (of the 25 EU) countries where most applicants end up having patent rights.
Composition of the Appellate Court
• The Unified Patent System will have parallel Trial Courts in Paris, London and Munich, each with exclusive jurisdiction for differing areas of technology, while there will be a single appellate tribunal.
• Who will the judges be on the appellate court?
Composition of the Appellate Court
• The answer to the question as to composition of the appellate judiciary will be a major factor in determining whether the system is “pro” or “anti” patent.
Composition of the Appellate Court
• The reason there will be anti-patent judges is that each country has one equal voice on the two bodies that determine the judges who are recommended and then approved for the court system.
Composition of the Appellate Court
• Thus, the great majority of the Unified System states have little patent protection: But, they may have a great deal of say in determining the composition of the judiciary. Compromise is undoubtedly required because appointment of judges is by unanimous consent.
Parallel National Filings
• For important inventions, particularly after the transition period, parallel national filings may be expected for Germany, France and the U.K.
• To the extent that an applicant chooses to pursue a Unified Patent, if this is the only patent protection, he has put all of his patent eggs in the Unified Patent System basket.
Parallel National Filings
• At the Naples Conference it was proposed that whenever a European application is filed which nominates Germany a parallel national application with slightly different scope could be filed in the German Patent Office.
Parallel National Filings
• The German parallel filing route has recently been simplified for the vast majority of applicants who file their patent applications in the English language:
• As from April, the German Patent Office will honor English language filings, with no translation into German required for twelve months.
Parallel National Filings
• It is, of course, proscribed to have identical coverage in a Unified patent and a national application.
• But, the two patents can coexist with coverage of the same commercial product, provided there is some difference between the claims of the two patents.
Balkanization Among the EPO States
• The EU “Unified” patent grant is controlled by the European Patent Office because the “Unified” patent is a patented granted from an EPC application.
• The Administrative Council that controls the EPO is a one country, one vote system dominated by countries where patents are unimportant as manifested by the patents in force data for the EPC Member States:
Balkanization Among the EPO States
• The Administrative Council has given its blessing to a variety of moves favoring national systems.
• Searching is now carried out in national offices.
Balkanization Among the EPO States
• National options exist for parallel patent-like systems that could be introduced to bypass the EPC and the EU Unified Patent System:
• While no parallel national patent system substantively different from the EPC is permitted, the small states-dominated EPC has sub silentio endorsed the existence of the parallel German “utility model” system that is a de facto patent system.
Balkanization Among the EPO States
• The introduction of the English language German application is just the latest move by a national office to compete with the European Patent Office.
Second Naples Midwinter Patent Law Experts Conference (2014)
• Panel presentations and discussions at the Naples Midwinter Patent Law Experts Conference held at the Naples Ritz Carlton, February 4-5, 2013, led to the creation of this presentation.
• Save the Date: The Second Annual Naples Midwinter Patent Law Experts Conference is scheduled for Monday and Tuesday:
February 10-11, 2014
About the Author
HAROLD C. WEGNER continues his patent practice as a partner at Foley & Lardner LLP. Prof. Wegner is a member of the Advisory Board of the Akron University School of Law.
Prof. Wegner retains his affiliation with the George Washington University Law School where he had been Director of the Intellectual Property Law Program and Professor of Law.
Prof. Wegner’s patent career commenced with service at the U.S. Department of Commerce as a Patent Examiner. He spent three years at the Max-Planck-Institut für Geistiges Eigentum in Munich where he was a Wissenschaftliche Mitarbeiter. He then became a Kenshuin at the Kyoto University Law Faculty under Dr. Kitagawa.
contact: [email protected] 36 [email protected]