Author: Alex Frost
1 February, 2013
On 17th December 2012, two European Union Regulations were published. Regulation EU 1257/2012 creates Unitary Patent protection (EUP) (let’s call it the EUP Reg), and Regulation EU 1260/2012 sets out the translation arrangements for the EUP (let’s call it the Translations Reg).
The two Regulations are made under the Enhanced Cooperation provisions of the European Union (EU) allowing fewer than all EU states to adopt provisions affecting only participating states.
At the same time a Draft Agreement setting up a Unified Patent Court (UPC) was approved and has now been published in final form as Agreement 1635/12 dated 11 Jan 2013 (let’s call it the UPC Agreement). It will be available for signature and subsequent ratification by all EU states and a signing ceremony is planned for 18 February 2013.
In this first Bulletin we provide, in the form of a list of questions and answers, basic information on the proposed European Patent with Unitary Effect (EUP). We are also publishing today a second Bulletin, on the Unified Patent Court (UPC) and a third Bulletin providing our thoughts on What it all Means for You!
1) What is an EUP?
It will be a single patent right covering all those member states of the European Union that are participating in the new EUP and Translation Regulations mentioned above (the EUP States).
It will be obtained by exercising an option available on grant of a European Patent (EP) to file a request at the EPO to register the EP as having Unitary Effect. The resulting EUP will be maintained by payment of a single annual renewal fee to the EPO. If no such request for Unitary Effect is filed within one month of EP grant, the EP patent will continue as a bundle of ‘national’ patents to be validated in designated states as desired. Normal EP Validation will be required in any case in any EP designated states which are not participating EUP States, particularly including designated EPC states which are not members of the EU. Registration of an EP as an EUP is available only if the EP is granted with identical claims for all EUP states.
2) Which are the Participating Member States (the EUP States)?
These are 25 of the 27 EU states, the exceptions at present being Italy (IT) and Spain (ES):
|Belgium (BE)||Greece (GR)
|| Portugal (PT)
|Bulgaria (BG)||Hungary (HU)
|| Romania (RO)
|Cyprus (CY)||Ireland (IE)
|| Slovakia (SK)
|Czech Republic (CZ)||Latvia (IS)
|| Slovenia (SI)
|Denmark (DK)||Lithuania (LT)
|| Sweden (SE)
|Estonia (EE)||Luxembourg (LU)
|| United Kingdom (UK)
|Finland (FI)||Malta (MT)
|France (FR)||Netherlands (NL)
EPC countries such as Switzerland and Norway, which are not members of the EU cannot participate.
There is a strong possibility that the EUP will start with fewer than these 25 Participating States (see below).
3) When is this going to start?
The currently approved Regulations and the UPC Agreement stipulate a start date of 1st January 2014. However this will be delayed if (as is expected) the UPC Agreement is not in force in time before then. Once in force, it will then be possible to register as having Unitary Effect any EP granted on or after the start date. It is also possible that not all current Participating Member States will have acceded to the UPC Agreement when the Law comes into force, whereupon those states will not in fact participate until they have acceded to the UPC Agreement. See our companion Bulletin on the Unified Patent Court (UPC) for the requirements for the UPC agreement coming into force. Current thinking is that the earliest start date will be sometime in 2015.
4) What are the translation requirements?
The procedure for EP grant does not change, so the usual French and German claims translations will be required.
In addition, for a transition period of at least six years after the start date, the proprietor will be required at his expense to furnish a translation of the whole text of an English language EP into another official language of the EU, to be filed at the EPO with the request for Unitary Effect (within one month of the date of grant). It may be noted that the Regulation does not appear to exclude using a language of an EU state which is not a participating EUP State, such as Italian or Spanish!
In the event of an infringement dispute, there is a separate requirement for the proprietor to furnish at his expense a translation of the entire patent into the language of the Member State in which the infringement took place, and/or in which the infringer is domiciled; and also if requested by the Court, a translation into the language of the Court (if different).
5) What about costs?
There will be no change to the cost of filing and prosecuting up to and including grant of a European Patent, which is then to be registered with Unitary Effect and become an EUP. On grant, the cost of an EUP will further include:
a) The cost of full translation of the English language granted patent into another official language of an EU state. For a specification of typical length – say, 10-15 pages of description – and assuming that French or German is chosen so that the claims will already have been translated, the cost could be around £1,000
b) Possibly an official fee for registration of the EUP at the EPO, though the Regulation hints that EPO costs should be met from EUP renewal fees.
c) Attorney fees for completing the procedure: say, a few hundred pounds.
d) Annual renewal fees for the EUP payable to the EPO. The Regulation requires that these will be equivalent to the renewals fees payable for the average geographical coverage of a current EP, say five leading countries. Thus upon grant of the EP patent the first EUP renewal fee might be anticipated to be around £600, rising to about £5,000 for the final year (year 20).
It appears likely, therefore, that the cost of registering an EUP will be similar to the cost of validating in the five most usually selected London Agreement countries that are Participating Member States under the Agreement, i.e. DE, FR, GB, NL and SE. The subsequent renewal costs will then also be comparable.
6) What about enforcement and validity of an EUP?
The current post-grant opposition procedure of an EP will continue to be available for EPs that have been registered as an EUP.
Apart from EPO Oppositions, all post grant disputes, e.g. infringement and validity relating to EUPs will be handled by the new Unified Patent Court (UPC). For more details see our companion Bulletin on the UPC. The manner in which Oppositions handled by the EPO will interact with invalidity actions brought centrally against an EUP in the UPC remains to be clarified.
7) What about enforcement and validity of EP National patents validated in EU states?
It is intended that the UPC will eventually have exclusive competence for all disputes under EP National patents as well as EUPs. However, this will only apply to EP validations in the EU states that have ratified and acceded to the UPC Agreement (see our UPC Bulletin), so that national courts will retain competence for EP National patents in non-UPC EU states until they do accede.
Furthermore, the UPC Agreement provides for an opt-out whereby patent proprietors can, on an EP case by EP case basis, elect to opt out of the exclusive competence of the UPC for the EP National patents validated in UPC states, so that national courts retain competence. More details of the opt-out procedure are given in our UPC Bulletin.
8) What about enforcement and validity of EP National Patents validated in other EPC states that are not members of the EU?
These are unaffected so that all disputes relating to EP National patents in these countries, e.g. Switzerland and Norway, will continue under the sole competence of their local national Courts.
9) What effect will the EUP have on nationally granted patent rights in EUP states?
The short answer is, none. National patent rights will continue to be available as an alternative to an EUP, as they are now instead of EP rights. These national patent rights granted by the national patent offices of EU states (whether or not they are participating EUP states) will continue to remain under the sole jurisdiction of national courts. There will be no obligation for any judgement handed down by a national court in one member state, in respect of a nationally granted patent, to be confirmed and enforced by another member state in respect of their own equivalent national patent, even if the claims of each are identical.
It is anticipated that the national laws of the member states, and the EPC, will need to be modified to deal with any double protection from possibly overlapping, substantially coterminous EUP rights granted by the EPO and national rights granted by national patent offices. There are existing rules to prevent such “double patenting” by means of rights granted by the EPO and national patent offices.