The Unitary Patent Outstanding Legal Issues and Challenges

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1 The Unitary Patent Outstanding Legal Issues and Challenges Margot Fröhlinger Principal Director Unitary Patent, European and International Legal Affairs Fordham 31 March 2016

2 The secondary legal framework for the Unitary Patent has been completed by the Select Committee on 15 December 2015 when a number of implementing Rules were adopted: Rules relating to Fees Budgetary and Financial Rules Rules relating to Unitary Patent Protection Rules relating to the Distribution of Fees among the participating Member States see 2

3 Renewal fees: the adopted Top 4 level The level of renewal fees - so called TOP 4 is equivalent to the accumulated fees of DE, FR, UK and NL. 3

4 The TOP 4 level will be compared by users with the renewal fees paid for a classical European patent validated in several European countries On average, a European patent is validated in 4,5 countries out of the 26 participating Member States However, 50,58 % of all granted European patents are validated only in 3 countries or less, 70,5 % in 4 countries or less out of the 26 participating Member States 4

5 The comparison of costs for the Unitary Patent and the classical European patent should take into account not only the level of renewal fees A comparison needs to take into account also the transactional costs: attorney fees for validations, translation costs for validations, publication fees to be paid to national patent offices and attorney fees for maintenance (renewal fee payments) The transactional and overall costs for the registration and the maintenance of a Unitary Patent can be expected to be significantly lower than the costs for a European patent validated in 4 countries but slightly higher than the costs for a European patent validated in 3 countries. 5

6 Outstanding legal issues and challenges concerning questions which could not or simply were not addressed by the EU Regulations or the Rules adopted by the Select Committee They will now have to be addressed by the EU Commission, by the participating Member States at national level, or eventually by the UPC 6

7 Creation of Unitary SPCs envisaged by the EU Commission as announced in the Single Market Strategy of 28/10/2015 COM(2015) 550 final and the accompanying Staff Working Document of 28/10/2015 SWD (2015) 202 final This will be difficult in legal and political terms and is not very likely to be achieved in the short term. (Open questions include: creation of an EU IP Title for only 26 Member States, title to be granted by whom, fees to be fixed by whom, fees to be collected and maintained by whom, language regime?) Pending the creation of Unitary SPCs the Commission will clarify that national SPCs can be obtained on the basis of a Unitary Patent 7

8 National validations in case a request for unitary effect is rejected after the deadline for validations at national level expired Discussions in the Select Committee on this issue revealed broad consensus among Member States for reopening the deadline for national validations in this case This has been implemented or is in the process of being implemented by SW, FI, NL, DE Others such as UK foresee that if the issue is still pending (for instance if an appeal against the registration of unitary effect is still pending before the UPC) the patent holder in order to be on the safe side can pay the national renewal fees Other Member States will still have to address this issue 8

9 Cases in which prior national rights lead to a limitation or revocation of the patent for the territory of one of the participating Member States after the registration of unitary effect Different approaches considered: either revocation or limitation of the unitary effect only for the territory of the Member State concerned, or revocation or limitation of the entire unitary effect and reopening of the deadline for national validations or loss of the entire Patent? The solution may have to be left to the UPC 9

10 Double protection for the same invention by Unitary Patents and national patents deliberately left open in EU Regulation 1257/2012 Different approaches implemented or considered by Member States Some Member States who currently already allow double protection by classical European patents and national patents which is permitted under Article 139(3) EPC (SW, DK, FI, AT) allow this also for Unitary Patents. Others who prohibit this for classical European patents extend the prohibition to Unitary Patents, (FR, UK) DE who traditionally prohibited double protection lifts the prohibition for Unitary Patents and classical European patents which have not been opted out 10

11 Allowing double protection for the same invention by Unitary Patents (and classical European patents which are not opted out) adds another layer of complexity However, it provides also a safety-net for all those who are concerned about the risks of a central revocation action (or counter-claim for revocation) at the UPC If a patent is lost as a result of a central revocation action before the UPC, protection can still be provided by the national patent 11

12 Thank you for your attention!