kilburn & strode llp 20 red lion street london wc1r 4pj united kingdom t: +44 (0) 20 7539...

Kilburn & Strode LLP 20 Red Lion Street London WC1R 4PJ United Kingdom

T: +44 (0) 20 7539 4200 F: +44 (0) 20 7539 4299 E: [email protected] W: www.kstrode.co.uk

EACCNJ European Union IP Forum

Nick Bassil

Kilburn & Strode LLP

European Patent Attorneys • Chartered Patent Attorneys • Trade Mark Attorneys

Kilburn & Strode LLP20 Red Lion StreetLondon WC1R 4PJUnited Kingdom

T: +44 (0) 20 7539 4200F: +44 (0) 20 7539 4299E: [email protected]: www.kstrode.co.uk

Topics

• The European patent landscape– Patentability– Costs– Enforcement– Proposed EU Unitary Patent and

Unified Patent Court

• The European TM/® and © landscape



The European patent landscape




EU states

From: http://europa.eu/about-eu/countries/index_en.htm




EPC states

From: http://www.epo.org/about-us/organisation/member-states.html




Patentability in Europe

• Novelty– Absolute– Exception for “abusive disclosure” or

international exhibition (6 months)

• Inventive step– “Objective problem to be solved”– Compared to “closest prior art”




Disclosure

• No “duty of candour” and no inequitable conduct issues

• EPO/USPTO agreement to share search results from priority documents

• EPO can request update on citations from co-pending applications




EPO

• Examining Division– 3 members in a division– Separate search before substantive

examination• Reply to search opinion

– Interviews possible (but exceptions)– Right to oral proceedings must be

requested




EPO costs

• Cost of filing and prosecution– “Cost reduction strategies”– Consider national filings and/or PPH

• Grant stage costs– Claims translation

• Validation costs– London Agreement reduction in

formalities




Oral proceedings at EPO

• OPs in Examination– Opportunity to settle beforehand– Final submissions– Use of auxiliary requests

• OPs in Opposition– Can avoid if other side withdraws (but

not always) – Use of auxiliary requests




Enforcement in Europe

• National courts– Different procedures but trend to

harmonise decisions

• EU IP Enforcement Directive– Minimum standards across EU states

in single market– But differences remain in discovery

etc.




Top tips for filing patent applications in Europe

• Remember– “Incorporation by reference” does not

exist (in general)– EPO treats PCT stage as part of EPO

regional procedure– If you don’t pay additional search fees

in PCT phase• Cannot change claims if EPO was ISA

– Limited to scope of search by ISA/EPO

• Can reorder claims if ISA was other PO





• Avoid– Multiple claims in same category– Excess claims fees (+16/ +51)– Excess page charges (+36)– Adding matter in amendments

• Look for other solutions!• “Same words/same order/same place”

test• Added matter is a ground for invalidity!





• Do– Include evidence of special technical

effect in application/ worked examples

• Key to success with inventive step

– Include micro-organism deposit receipt information in priority document and PCT application





• EPO Divisional Practice changes– 2 year rule

• Voluntary (unclaimed subject matter)• Mandatory (in response to unity

objection)

– No “rolling” divisional applications anymore

• Decide strategy at an earlier stage now




Opposition practice

• No presumption of validity for EP patent

• Opponent has burden of proof - but it can shift

• Actions of Examiner in examination irrelevant (mostly)

• Can file opposition anonymously – but must not be an abuse of process




Appeal practice

• Appeal considers correctness of 1st instance decision– Not an opportunity to file a new case!– Can respond to 1st instance decision

with amendments (up to a point)– Statement of Grounds is important

and cannot be embellished later




Proposed EU Unitary Patent and Unified

Patent Court

• Unitary Patent

• Unified Patent Court

• Status

• Stumbling blocks




Unitary Patent




“Standard” European Patent

• Current “Standard” European Patent filed at EPO and examined centrally

• On grant necessary to validate “Standard” European patent in states where protection needed

• Central opposition possible in 9 months after grant




Territorial scope

• “Standard” EP patent covers 38 EPC contacting states (plus 2 extension states

• “Unitary” patent to cover 25 EU Member States (27 EU States minus IT & ES)

• EPO to administer “Unitary” patent as well as “Standard” EP patent




EU and EPC




Aims of Unitary Patent

• “Making access to the patent system easier, less costly and legally secure”

• “Improving the level of patent protection by providing uniform patent protection in all participating member states”

• Creates unitary patent in Europe in addition to “standard” European patent and national patents




Obtaining a Unitary Patent

• Examination process unchanged at EPO for “Unitary” patent

• EPO grant formalities unchanged (still file claim translations, pay grant & printing fees etc.)

• Change comes in second stage of grant process - validation vs. unitary effect





Within 1 month of grant, file:– Request for unitary effect

(Art 12(1)(g))– Translations (during transitional

period, until machine translations sufficiently accurate)

(Translation Arrangements, Art 6)





• Translations:– For French/German patents: translate into

English (Translation Arrangements, Art 6(1)(a))

– For English language patents: translate into language of an EU member state (Translation Arrangements, Art 6(1)(b))

• Compensation scheme for states with non-EPO official language (Translation Arrangements, Art 5)




Effect of a Unitary Patent

• Uniform protection having equal effect in all participating Member States (Art 3(2))

• Assignment, Revocation, LimitationLapse…..in respect of all states

• License….in respect of whole or part of territories of states(Art 3(2))




Renewal of a Unitary Patent

Renewal fees- Annually, post-grant, progressive- Paid to the EPO- 6m grace period- “equivalent to the level of the renewal

fee to be paid for the average geographical coverage of current European Patent”

(Art 14 to 16)




Unitary Patent

• Into force: 1 January 2014 or entry into force of Unified Patent Court, whichever later (Art 22(2))– Delays over ratification of Court

agreement could delay Unitary patent

• Available for any European Patent granted on or after the above date (Art 22(4))




Patent Protection in Europe – after implementation

Options:– Standard European Patent– Unitary Patent– Unitary Patent + validations in EPC

states which are not participating Member States (ES, IT, AL, BA, CH & LI, HR, IS, MC, MK, ME, NO, RS, SM & TR)

– National Patents

(Rec 22)




Unified Patents Court





• International Agreement between participating member states

• Jurisdiction:- Unitary patent - Standard EP patent (exclusive after

transitional period of 7 years)- SPCs (from Unitary and Standard EP

patents but not national patents?)

(Art 3 & 16)





Appeal Court Registry

Court of First Instance (Central, Local and Regional Divisions)





• Court of First Instance (CFI)- Central Division

• Paris• London (Chemistry & Biotech cases)• Munich (Mechanical Engineering cases)

- Local and Regional Divisions

(Art 4 & 5)





• Court of Appeal (Art 4 & 7)

– Luxembourg

• Registry (Art 4 & 8)

– Keeps records of all cases– According to latest copy of

Agreement, at seat of Court of Appeal, with sub-registries at CFI

– Reports say it will actually be in Paris





• Comes into force after – Agreement by EU Parliament, – Ratification by 13 states, including the

3 states in which the highest number of European Patents was in force in the preceding year (Art. 59)

– If in force after 1 January 2014, will bring in Unitary Patent Regulation also





• Transitional period for Standard European patents: – For 7 years after entry into force, can

still initiate proceedings for infringement/revocation before national court (Art 58(1) & (2))

– EPs filed/granted prior to entry into force – can opt out (Art 58(3) & (4))

• Consider opting out until track record of court established




Status

• Drafts in circulation...– Draft Regulation on Unitary Patent – Draft Regulation on Translation

Arrangements– Draft Agreement on Unified Patent

Court– Draft Rules of Procedure of Court

• But, secret negotiations mean current content not clear




Status

• Draft documents agreed by EU Council on 29 June 2012

• EU Parliament objected to proposed removal of Articles 6 – 8

• Proposals reconsidered in the Autumn?

• Target is to grant first Unitary Patent by April 2014




Stumbling Blocks

• Articles 6 – 8 of Unitary Patent Regulation– Set out what constitutes infringement of a

Unitary Patent– Means CJEU have jurisdiction over

questions of law regarding infringement of Unitary Patents (but not standard patents)

– Council proposed to delete, EU Parliament not happy

– Definitions of infringement also found in Articles 14f-14h of Unified Court Agreement (but this is not subject to CJEU).




Stumbling Blocks

• Bifurcation– Infringement / Validity can be

separate

• Languages

• Cost

• Judges

• National SPCs– SPCs on Unitary Patents?




...and after all that

• Unitary patent can be avoided by electing to have Standard European Patent instead– (but Unified Court still relevant)

• To avoid translations – for Standard EP patent validate in London Agreement states only– No translations: FR DE CH/LI LU MC GB IE

– Claims (into local language) if patent in English: HR DK FI HU IS NL SE




...and after all that

• Unified Patent Court can be avoided by: – Initiating proceedings nationally

during transitional period– opting out (for cases filed/granted

before Agreement comes into force)– filing national patents instead of EP

(N.B. Some states have “closed” the national route from PCTs)



The European Trademark and Copyright landscape




Copyright

• Life of the author plus 70 years

• No registration

• Only tested in court

• EU as driving force for harmonisation and protection for new forms of related right– Database right etc.



Trademarks




Madrid System

• File base application – national or CTM – wait until base is registered

• File Madrid Application to obtain protection in selected territories

• National TMOs examination – notice of grant protection in 18 months

• ‘Central Attack’ on base in five years leads to break-up of registration




Madrid System

• Madrid Applications – bundle of rights covering selected countries.

• Protocol/Agreement – cannot be combined; if country is member of both Protocol prevails

• Can add designations at any time; rights subsist for remaining duration of underlying Madrid registration




EU states

From: http://europa.eu/about-eu/countries/index_en.htm




OHIM

• File application• Examination on absolute/relative

grounds • Searches conducted for earlier rights• Publication (opposition period 3 months) • Registration

– Post-grant Challenge – Invalidation /Revocation




Trademarks

• Avoid Madrid System when applying for CTM– File direct at OHIM instead– Broader specification (no “actual use”

issue)

• IP Translator case at CJEU (Case C-307/10)– Applications TM using Nice Classification

as definition of all good/services in application




Comparison US/EU

USA

• Actual Use &/or Foreign filing PLUS Intention to Use;

• Objections and amendment likely

• 30 days (oppn.)• Declaration of Use

5-6th year• Non use: 3 years

EU

• No pre-registration use required /intention– (unless showing

acquired distinctiveness)

• Broader specification possible

• 3 months (oppn.)• Reg. subsists until

challenged/expiry• Non use: 5 years




Top tips for successful EU TM filing strategy

• First filing in ‘fast to register’ territory – claim Paris Convention 6-month

priority and file national applications• UK, approx. 4 months • CTM approx. 5-6 months • US more than 8 months

– Madrid System filings based on initial registration



Questions?

Nick Bassil

Kilburn & Strode LLP

www.kstrode.co.uk



Details of Unified Patent Court

Further information on procedures and composition of the Court




Court of First Instance

• Central Division– Composition of Panel:

• 2 legally-qualified judges and 1 technically qualified judge

• Can be single legally qualified judge if parties agree

• Mixed nationalities

(Art 6 (5a) - (7))





• Local and Regional Divisions– Composition of Panel

• 3 legally qualified judges• Can request an additional, technically

qualified judge• Can be single legally qualified judge if

parties agree• Mixed nationalities

(Art 6 (1) – (5) & (7))





• Languages– Central Division

• language of patent (Art 29(5))

– Local/Regional Divisions • an official language of the EU which is an official

language of state hosting the Division; or• an official language of the EPO, if designated as

the language of proceedings by the state; or• language of patent (if parties and panel agree)

(Art 29(1) – (3))





• Infringement – Local/Regional Division where

alleged infringement occurred or where defendant has residence/place of business (Art 15a(1))

– Central Division if no appropriate L/R Division (Art 15a(1)(b))

– Parties can agree on a Division of their choice, including Central Division (Art 15(6))





• Counterclaim for revocation– Same Local/Regional Division as

Infringement Proceedings. L/R Division can:• Proceed with both• Refer counterclaim for revocation to Central

Division and suspend or proceed with infringement proceedings (bifurcation)

• Refer both to the Central Division (if parties agree)

(Art 15a(2) & (3))

– Parties can agree on a Division of their choice, including Central Division (Art 15(6))





• Action for Revocation– Central Division (Art 15a(3))– Other Division if parties agree (Art

15a(6))

• Declarations of non-infringement– Central Division (Art 15a(3))– Other Division if parties agree (Art

15a(6))





• Belgian or Italian “torpedos” will cease under Unified Patent Court

• A pending action for Declaration of Non-infringement will be stayed if an Infringement action is initiated within 3 months (Art 15a(5))





• Example 1– Slovenian generics company (SI) infringing

patent (language= English) in UK– Patentee files action for infringement at UK

Local Division– SI files counterclaim for revocation at UK

Local Division– UK Local Division can hear both claims,

refer counterclaim to CD (bifurcation) or refer both claims to CD

– Parties could agree on alternative Division





• Example 2– Slovenian generics company (SI) infringing

patent in Slovenia– SI files action for revocation in Central

Division– Patentee files action for infringement at

Local Division (Slovenia) or Regional Division (Hungary?)

– Slovenian/Hungarian Division can hear action for infringement (bifurcation) or refer it to the Central Division

– Parties could agree on alternative Division





• Forum shopping– where alleged infringement occurred

or where defendant has residence/place of business

• Bifurcation– action for revocation or counterclaim

for revocation be handled by Central Division whilst Local/Regional Division handles the infringement proceedings




Court of Appeal

• Composition of Panel- 3 legally qualified judges and 2

technically qualified judges- Mixed nationalities

(Art. 7)




Court of Appeal

• Languages:– Language of proceedings before the

CFI; or– Language of patent (if parties agree);

or– Another official language of a state (if

Court of Appeal and parties agree)

(Article 30)

kilburn & strode llp 20 red lion street london wc1r 4pj united kingdom t: +44 (0) 20 7539...

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