Naples Midwinter Patent Law Experts Conference … Midwinter Patent Law Experts Conference ......
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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 1 [email protected]
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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
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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
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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
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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]
