Posts by: Sofia Willquist | (19) posts

Cautious optimism regarding 2017 UPC implementation

During the meeting of the EU Competitiveness Council on 28 November 2016 in Brussels, the UK Minister of State for Energy and Intellectual Property stated that the UK will proceed with their ratification process in the months to come.

The statement from the UK Minister for State and Intellectual Property Baroness Neville-Rolfe now seemingly paves the way for the UPC (Unified Patent Court) entering into force as soon as the second half of 2017, provided that Germany also ratifies in due course. However, there are still no official statements from either one of these countries when they actually expect to complete their ratification processes.

Voices were raised after the EU referendum on 23 June in favour of the UK ratifying the Agreement before filing the Article 50 declaration that sets in motion the process of leaving the EU, did so in view of the fact that the UPC is not an EU institution, but an international patent court and that the European Court of Justice (CJEU) will not deal with issues of substantive patent law. What will happen after the UK files the Article 50 is very uncertain, and concerns have also been raised that this might negatively influence how patent holders look at the UPC once it is operational. However, the intention of the UK administration appears to be, for as long as they are members of the EU, to play a full and active role in the UPC, according to Baroness Neville-Rolfe. She followed up by stating that “we will seek the best deal possible as we negotiate a new agreement with the European Union”. This statement might also be positive news with regards to European trademark and design rights.

In a statement made on 28 November, the UPC Preparatory Committee welcomes the news from the UK Minister. Since the UK vote to leave, the Preparatory Committee of the UPC has continued their efforts in recruiting judges and preparing the IT system for the entry into force of the UPC. Many countries have also moved forward with their preparations, for instance on 8 November it was announced on the UPC website that the Italian authorities had formally selected the location for the local division to be set up in Milan.

In an interview published on the website juve.de on 22 November, the chair of the UPC Preparatory Committee Alexander Ramsay also stated that the Brexit referendum more or less only posed a “speed bump” on the way to realizing the unitary patent protection and the UPC.

In addition, in a statement published on 29 November the EPO President Benoît Battistelli said:

“This important news from the UK government means that the long-awaited court is soon to be realized. Users, especially SMEs, have been waiting for the creation of a simpler patent system for Europe, and their relief is palpable. The way is now clear for the last few ratifications to take place in the coming months, and the new court to start work soon after. The UPC will provide a single forum for all participating states delivering faster enforcement actions and harmonized judicial decisions.”

The Preparatory Committee further fully acknowledges the uncertainty regarding the possible start of the system in their statement made on 28 November, and that the industry needs time to prepare for the new patent system. They will therefore publish a revised roadmap as soon as possible.

Provided that both UK and Germany ratify during the spring of 2017, businesses should be prepared for the entry into force during the autumn of next year.

Sofia Willquist, Partner – European Patent Attorney

Amended rules relating to the refund of the examination fee

Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.

This rule will now change, and the examination fee will hereafter be refunded as follows:

R Fees 11 (a)  in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and

R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.

A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.

The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.

In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.

A withdrawal made conditional on the 50% refund will generally be possible.

RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.

Sofia Willquist, European Patent Attorney

[1] RFees 11 Refund of examination fee

Effects of UK leaving the EU on the Unitary Patent and the UPC

The result of the EU referendum held on 23 June was that the UK decided to leave the EU (European Union). As we have written previously the process of leaving the EU is long and can even take up to a couple of years.

The UK will have to negotiate with the EU and the remaining member states regarding several issues, and until the UK is finally ready to leave, nothing is expected to change.

It is for instance expected that the UK will stay within the European Patent Convention, since the EPO is not an EU institution, and thus be available for national validations for years to come. British European Patent Attorneys holding a certificate to litigate before the UPC will most likely still be allowed to do so.

In general terms no IP rights, including trademarks and designs in the UK will be lost, even though some might have to go through transitional actions when the UK finally leaves the EU.

What will happen to the Unitary patent package, including the UPC, is more difficult to predict. It is likely that the process will be delayed, and that the entry into force cannot take place in the beginning of 2017. Some voices have been heard that the UK might still be inclined to ratify the agreement during the negotiation period, as they are still a part of the EU until that period ends, meaning that the UPC can be up and running while the UK is still in the EU. If that happens, the UPC might very well be on its way during 2017. The UPC is also an international agreement, leaving some room for (Art 24(2)(2) UPCA) the UK to stay within the UPC, and have jurisdiction over traditional European patents, if they ratify before the end of the negotiation period ends and if proper amendments to the UPCA are made.

As one of the locations of the court is set to be in London, the UPC agreement will either have to be amended to relocate the court, or the seat will still be in London even though this court would have no jurisdiction over patents in UK and neither would UK nationals be able to sit as judges in the Court. None of these options is very attractive, and it is possible that keeping the Court in London will violate EU law. The UPCA will thus have to be amended, and a new location would likely be Milan in Italy or The Hague in the Netherlands.

One major concern is that the value of the Unitary patent will be diminished if the UK is not one of the countries in which the unitary patent can be obtained, and subsequently litigated in a unified manner. The UPC will then lose some of its attractiveness, since UK nationally validated patents will have to be nationally litigated and enforced. On the other hand, patent holders might be less inclined to opt out of the UPC since the UK designation would not be able to be attacked in the UPC.

It is also foreseen that the language regime will remain unchanged, i.e. the three languages English, French and German will still be used as stipulated by the Unitary patent regulation and the UPC.

Once the gun smoke has settled in the UK, we will know if they intend to ratify or not, and the time schedule for the UPC will be settled.

Sofia Willquist, European Patent Attorney

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Prepare your strategy for the Unitary Patent and the UPC – (Part III)

Strategies for pending patent applications and important aspects of the opt out procedure

When preparing for the entry into force of the new Patent system in Europe, also patent application which are now currently pending before the European Patent Organization (EPO) must be considered. A decision must be made whether to try to delay the proceedings to be able to request a European Patent with Unitary effect or to proceed to a granted European patent before this date. Of course, a pending patent application which is not foreseen to be granted before the entry into force, and which is not meant to be within the competence of the Unified Patent Court (UPC), may also be opted out, starting during the sunrise period.

Delaying the proceedings with the EPO can be done by requesting extensions of time limits, or if that’s no longer an option, by filing divisional applications. The filing of divisional applications, having slightly different scope of protection, could also be an important strategy for those applicants who wish to have it both ways, i.e. request Unitary Patent and have the patent validated nationally as today.

This means that both applicants and proprietors will have to consider the possibility of requesting opt out from the UPC, even before the Court opens. A strategy should be developed for the patent portfolio, at the latest during the fall of 2016, to be able to quickly file any such requests when the Registry of the UPC opens up. The request for opt out can be withdrawn, at any time unless national litigation proceedings have begun, but you may only request opt out and withdraw the request one time.

Requesting opt out might seem as an easy administrative task, especially since it is done online in the Case Management System of the UPC, and is not envisaged to incur any fees. However, the proprietor must keep in mind that it is only the entitled proprietor and all entitled proprietors that may file the request. Keeping track of who is the entitled proprietor in different states, is therefore essential, especially if you have multiple or different proprietors for your patents.

Sofia Willquist, European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part II)

The language regime for the Unitary Patent and the divisions of the UPC

As we have written before the creation and start of the Unified Patent Court will change the mindset of patent litigation in Europe fundamentally. However, Europe is a diverse continent, not the least when it comes to languages. With the European Patent Office (EPO), French, German and English have since long been established as language of proceedings, i.e. the language which the patent will be granted in. The language regime for the Unitary Patent should now also be considered. Within 1 month of the publication of the mention of grant the request for the Patent with Unitary effect must be filed.

If your patent is granted in English, a translation of the entire specification into any of the languages of the Contracting member states must also be filed at this time. If the patent is granted in French or German the translation must instead be filed in English. This translation should be man-made during a transitional period of 7 years, after which period this translation requirement will probably be abolished. The cost of preparing a translation should therefore be considered. As general advice, if the patent was originally filed in e.g. Danish, this text could be used for the translation. Otherwise if the text is only in English, a translation into German or French is probably the best alternative, as the patent claims will still have to be translated for the purpose of grant.

The language regime of the Unified Patent Court is also an important aspect, as for instance any actions for revocation must be filed in the language in which the patent was granted, and the claim must be filed with the central division of the Court. This means that if the patent was granted in German, a revocation action must be filed in German, even though it is filed with the Central Division in Paris or London. Infringement actions may be filed in the language of the specific division where the claim is filed. Hence, an infringement action filed with the Nordic Baltic regional division in Stockholm must be filed in English. Setting a strategy for the language of proceedings with the EPO (i.e. English, German or French) must be thus be done now, before filing any new patent applications.

Sofia Willquist, European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part I)

The creation and start of the Unified Patent Court will change the mindset of patent litigation in Europe fundamentally. The Preparatory Committee of the Unified Patent will, according to the Chairman Alexander Ramsay, be ready by the middle of 2016 with the preparations for the new Court.

In May the recruitment of judges began, and once the preparations are completed the so called “sunrise period” will start. The Agreement on the Patent with Unitary Effect, the Translation regime, and the Unified Patent Court will then enter into force, possibly already in the beginning of 2017 – and all applicants and proprietors therefore have to be readily prepared and have their strategies ready during the fall of 2016.
We will present in four parts some of the important factors and aspects to consider when preparing a strategy. Some other aspects that must be weighed in when preparing a strategy before the Unitary Patent and the UPC is existing or potential licensing agreements, different proprietors in different countries, if the patent has been involved in opposition proceedings etc.

Firstly it must be kept in mind that not all Contracting member states will be covered by the Unitary Effect from the start. At the moment (May 2016), only 10 countries have ratified the Unified Patent Court Agreement, and only those countries that have ratified at the time that your European patent is granted will be covered by the Unitary Patent. Since Great Britain and Germany will have to be among the 13 states to ratify the UPCA before it enters into force, which means that for the same cost for renewal fees for four countries today, your Unitary Patent will at least cover 13 states. This also means that your patents will be covered in the three Contracting Member states in which most validations of European patents are carried out today, which would still be a great advantage in terms of cost vs. coverage.

Sofia Willquist, European Patent Attorney

UPC getting closer – just a ”Brexit” referendum away?

When the UK prime minister David Cameron won the 2015 general election he, due to demands from his own Conservative MP party and other parties, promised to hold a referendum on whether Great Britain was to stay or exit the EU membership. This referendum will take place on 23 June, 2016.
A current poll by YouGov® EU referendum tracker (17 May, 2016) indicate that 44% of the voters wants to stay in the EU, 40 % wants to leave and 12% are still not certain about how to vote.

The UK has for a long time been one of the three Contracting Member states that most patentees decide to validate their patents in. They are as such a very important piece of the puzzle for the Agreements on a Patent with Unitary effect and the Unified patent court to be able to enter into force. If the UK decides to stay, their preparations for ratifying the Agreements have also come a long way. For instance, the Houses of Parliament have approved draft legislation to amend the UK Patents Act to give effect to the Agreements of the UPC and the Unitary Patent. They have also made amendments to the Patent Rules, which will come into force when the UPC agreement comes into force. It is thus very likely that the current time schedule of early 2017 will stand for the entry into force of the UPC. It is not likely that the ratification will be completed before the referendum.

However, if the UK decides to leave the EU, the UPC and Unitary Patent system cannot start until the UK no longer is a member of the EU, unless the UPC Agreements is amended. The reason for this is that a non-EU member state cannot hold a position in the UPC regime. Italy will take the UK’s place as one of the three mandatory states, since it was the fourth most popular country for validation in 2012 (“in the year preceding the year in which the signature of the Agreement takes place”).

Further, the central division of the UPC, which is set out to be placed in London, will likely have to relocate. This means that the UPC Agreement will have to be amended, and possibly ratified again by the Contracting member states that have already ratified. The language regime that stipulates that the central division proceedings, for instance revocation actions, shall be in the language of the patent is not likely to change, and about 70% of the cases will still be held in English.

The Lisbon Treaty (Article 50) governs the membership of the EU and it states that “Any member state may decide to withdraw from the Union in accordance with its own constitutional requirements.” However, a withdrawal from the EU is still a complex situation and any country desiring to leave will for instance have to negotiate with each of the other 27 states about the terms of departure, a process that can last for up to two years. The European council and the parliament in Strasbourg will then have to ratify the severance terms. In reality the “exit” may take more than two years.

With all of this taken into account, it is extremely difficult to predict when the UPC and the Patent with Unitary Effect may enter into force should we face a Brexit. In worst case, a delay of several years may be expected, unless a rapid re-negotiation and re-drafting of the current Agreements for the UPC and the Unitary Patent package can take place and be ratified accordingly.

Sofia Willquist, European Patent Attorney

Recruitment of Judges to the UPC during May

According to the Report of the 15th Preparatory Committee meeting of the Unified Patent Court (UPC), the recruitment of Judges will start during the beginning of May. [1]

The Court of First Instance will always have a multinational composition of the panel of judges. The panel shall comprise three judges, unless one of the parties requests that the President of the Court allocates an additional technically qualified judge from a pool of judges, in which case the panel is extended to four judges. The parties may also agree that the case is to be head by only one legally qualified judge. The panels will always be chaired by a legally qualified judge.

In the central division, i.e. Paris, London and Munich, any panel will consist of two legally qualified judges who are nationals of different Contracting Member (CM) states, and one technically qualified judge from the Pool of judges. (the “Pool”)

The local divisions expected to handle less than 50 cases annually, will have one legally qualified judge from the CM state where the local division is placed, and two legally qualified judges who are not nationals of that CM state. These judges will be allocated from the Pool of Judges. If the local division is expected to handle more than 50 cases annually, the panel will instead comprise two legally qualified judges who are nationals of that CM state, and one who is allocated from the Pool. That third judge will serve this local division on a long term basis in order to ensure an efficient functioning of the Court. If the Court is a regional division, two legally qualified judges will be selected from the CM states concern, and one from the Pool.

The technically qualified judge will always be selected by their experience in the relevant field of technology.

The judges now to be recruited shall ensure the highest standards of competence and proven experience in the field of patent litigation, and the legally qualified judges must have qualifications required for appointment to judicial offices in a CM state. The technically qualified judges must have a university degree and proven expertise in a field of technology, they must also have proven knowledge of civil law and procedure relevant to patent litigation.

The Pool will comprise all legally and technically qualified judges, who are full-time or part-time judges of the Court. There will be at least one technically qualified judge per field of technology. The allocation of judges from the Pool will be based on legal or technical skills, linguistic skills and relevant experience.

All judges to be recruited will receive proper training at a training facility set up in Budapest. The training framework will also focus on internships in national courts or divisions of the UPC, and improvement of linguistic skills, technical aspects of patent law. For the technically qualified judges the knowledge in civil procedure will of course be given a special focus.

Sofia Willquist, European Patent Attorney

a special focus.

Making well founded decisions about opting out…

 …of the Unified Patent Court and requesting Unitary Effect for your European Patent

The benefit of requesting Unitary Effect for your European Patent is obvious to anyone, by payment of only one renewal fee, equivalent to that of four national renewal fees, a territory potentially covering 25 EU states, if all current Contracting Member States ratify the Agreement, which is a territory equal to that of the USA is available for enforcing your patent rights. This benefit must of course be weighed against the fact that the Unitary Effect comes in a package with the new Unified Patent Court (UPC). A Court which has the ambition not only to deliver expeditious and high quality decisions, the aim is to be as fast as 12 months from filing a claim to reaching a decision, but also to enhance the legal certainty, and to make it easier to enforce patents and to defend oneself against unfounded claims and claims relating to patents which should be revoked. The legal certainty is to be enhanced by providing a more uniform case law.

However, today the legal systems in the Member States of European Union differ greatly, and even though it is foreseen that only the most qualified judges, with great experience in patent cases, will be recruited, it is difficult to predict exactly how the Court, with its multinational panel of judges will in fact rule.

Since the UPC will also have exclusive competence for already granted European Patents and for European Patents granted in that transitional period, the opt out possibility has been created to alleviate patent holders from this uncertainty.

The decision to stay within the competence of the UPC, or for that matter request Unitary Effect will involve great consideration of many factors. If you are in a field where there is a high likelihood of litigation, for instance if you expect competitors to copy your design, if the patent is licensed to different licensees in different countries, or if the patent is of extremely high value to your business the patent should probably be opted out.

If the possibility to enforce the patent for several European countries quickly and at once in one Court only, or if the patent has withstood opposition or even appeal at the European Patent Office the patent, i.e. the patent is strong, it should probably be kept within the UPC.

For some companies the default setting will most likely be to opt out most of their European Patents, and of course not request Unitary Effect, until the case law of the Court emerges. For other companies, in particular SMEs the decision will most likely be dependent on, and maybe also made in collaboration with potential or current licensees.

Hopefully, even if there is still some uncertainty, we will have enough case law within the first 2-3 years to be able to make even better decisions, and to give even better advice. There are of course many more factors than those mentioned above to consider, and the advisors at Awapatent will stand by to help you and your company to make well founded decisions.

Sofia Willquist, European Patent Attorney

Revised PACE programme from 1 January 2016

The programme for accelerated prosecution of European Patent Applications (PACE) allows applicants to request that the European Patent Office (EPO) processes their application rapidly. The request must be filed in writing, but will be excluded from file inspection.

In certain technical fields there has been constraints on how fast the EPO has been able to process the applications, due to the number of incoming PACE applications. Therefore, as a general recommendation, a PACE request should only be filed for some selected applications of a portfolio.

On January 1, 2016 a revised programme was initiated, in order to help applicants make better use of the programme and enable the EPO to process applications for which accelerated prosecution has been requested as soon as possible (OJ EPO 2015, A93).

Applicants will, from now on, be required to use the dedicated request form and file the request online. Informally filed requests, i.e. without using the form, or on paper, will not be processed.

Further, a request for participation in the PACE programme may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination, and the PACE request during examination may only be filed once the Examining division (ED) has taken over responsibility for the application.

An application will be removed from the PACE programme if the PACE request is withdrawn, if the applicant requests extension of time limits, if the application has been refused, withdrawn or deemed withdrawn. It will under those circumstances not be possible to restore the PACE application.

Further, the failure to pay renewal fees will cause the accelerated prosecution to be suspended.

For European patent applications filed on or after July 1, 2014 (including the Patent Cooperation Treaty (PCT) applications entering the European phase where the EPO did not act as the International Searching Authority (ISA)), no PACE request is needed, as the EPO will issue the European search report (EESR) within 6 months under the Early Certainty from Search (ECfS) programme.

For European patent applications filed before July 1, 2014 (including PCT applications entering the European phase where the EPO did not act as ISA) the EPO will make every effort to issue the EESR within 6 months of receipt of the PACE request. Further if the application is a PCT application and the EPO did not act as ISA, the supplementary European search will only be issued faster if the applicant also waives the right to communications pursuant to Rule 161(2) and 162(2) EPC and pays all relevant claims fees due.

During the examination stage the request for PACE can be filed at any stage once the ED has taken over responsibility. For PCT applications where EPO acted as ISA, PACE can be requested at any stage, for instance on entry into the European phase or together with the response to the WO-ISA, required under Rule 161(1) EPC.

Upon receipt of a PACE request the Examining division will make every effort to issue its next action, and any further actions, provided that the application is still within the PACE programme, within three months.

Sofia Willquist, European Patent Attorney