Key issues to consider when assessing whether to file for EU patent protection
At present, businesses relying on technical inventions and seeking patent protection in more than one European country can choose between filing patent applications at various national patent offices or at the European Patent Office (EPO).
The first route requires the filing of separate patent applications in each European country where protection is desired. This option incurs high costs when a significant number of countries will be covered.
The second route reduces the initial burden, as it is sufficient to file a single application in one of the official languages of the EPO (ie, English, French or German) to cover all member states of the European Patent Convention (EPC). Today, the EPC has a total of 38 member states and covers a population of more than 500 million. The EPC member states include all 28 EU member states and 10 non-EU member states such as Turkey (the sixth-largest economy in Europe), Norway and Switzerland.
Based on costs, it usually makes sense to file a patent application at the EPO if protection in more than three countries is sought. In 2014 approximately 160,000 applications actively entered into examination proceedings at the EPO and about 96,000 patents were granted.
However, the uniform character of the EPO route ends with the grant of the patent. In many EPC member states it is necessary to take additional measures to have patent protection granted by the EPO registered there. This involves filing a corresponding request at the national patent office, filing a partial or complete translation of the patent and appointing a local attorney – this final stage is known as national validation.
Once national validation is complete, the EPC patent becomes a bundle of independent national parts. For each of these national parts, maintenance fees (annuities) must be paid at the local national patent office. Given that a patent may be maintained for up to 20 years, this is a significant cost.
The cost associated with filing translations was significantly reduced when the London Agreement came into force in 2008. In this, a number of EPC member states – including Germany, France and the United Kingdom – dispensed with the translation requirement, while others accepted English as the language for the patent description and required translations only of the patent claims. However, the national validation procedures and maintenance after grant of EPC patents still result in a high administrative and financial burden (if protection in a significant number of countries outside France, Germany and the United Kingdom is sought).
EU patent package
An end to this burdensome validation looked possible in December 2012 when the European Union established a legal basis for a truly unitary European patent, thereby adding a third route to patent protection in Europe. Two EU regulations – EU Regulations 1257/2012 and 1260/2012 – set out the framework for the basic characteristics and language requirements of the EU patent. In addition, an independent multinational agreement – the Unified Patent Court (UPC) Agreement (January 11 2013) – signed by (most) EU member states establishes a new unified court system, the UPC. The whole legal package will become effective once at least 13 EU member states – including France, Germany and the United Kingdom – have ratified the UPC Agreement.
Under the new law, the actual procedure for filing and examining a patent application at the EPO will not change. However, at the end of the procedure, the patent owner can decide whether to stick with an EPC patent or request a unitary patent to cover all EU member states. The EPO will then register the unitary effect. However, importantly, for all non-EU member states that are covered by the EPC and EU member states that, at the time of registration of the unitary effect, have not signed and ratified the UPC Agreement, the present situation requiring post-grant national validations will not change. The respective national (non-EU) parts of the EPC patent will coexist independently with the EU patent, which may therefore also be called the ‘EU part’ of the EPC patent (see route 3 in Figure 1). Key issues that a patent-owning business should be aware of under those circumstances are discussed below.
The basic legal package is complete and ratification of the UPC Agreement is well underway, with 12 EU states having ratified the agreement as of June 2017. In addition, many of the various administrative, financial and national measures to launch a completely new court system are complete or at a well-advanced state. However, Brexit and the implications of the UK general election in June 2017 have caused a delay in the envisaged starting date of mid-2017 for the UPC to commence at least with provisional operations. Even assuming that the United Kingdom will proceed with ratification later in 2017 and that a recent challenge of the system before the German Constitutional Court can be resolved in an accelerated manner, the UPC may well not commence operations before Summer 2018. It is also unclear what will happen if Brexit eventually takes place – that is, whether the UPC system can start without the United Kingdom or whether the European Union and the United Kingdom can find a way to keep the United Kingdom in the system without being a full EU member state.
Another key issue is the territorial scope of protection that a business requires within Europe. EU member states Spain, Poland and Croatia have not accepted either or both of the two basic EU regulations and the UPC Agreement. Thus, the unitary EU patent will have a number of significant holes. As with the non-EU EPC member states, the existing national validation requirements will continue to apply in these EU countries, including the filing of translations and subsequent payment of national annuities. In a worst-case post-Brexit scenario, the United Kingdom may have to be added to the list of ‘holes’.
Also, with regard to the EU member states that participate in the EU patent package, as the new system will start as soon as 13 states (including France, Germany and the United Kingdom) have ratified the UPC Agreement, the first generation of EU patents will be limited to those 13 states. The territorial scope of this first generation will not change, even after further EU states ratify the agreement. Thus, businesses that decide to opt for an EU patent should be prepared to take on the administrative tasks associated with its step-wise territorial growth.
Let us consider some of the consequences of the above situation, based on an example. Assume that a patent-owning business wishes to cover the following states: France, Germany, the United Kingdom, Spain, Italy and Turkey – that is, the six largest economies that are presently participating in the EPC. As noted above, France, Germany and the United Kingdom do not require translations into their national languages, while Spain, Italy and Turkey do. However, because Spain and Turkey are not participating in the EU patent package, the EU patent route will still require two national validations, including translations into the national languages, thereby adding to costs.
In the above scenario, the EU patent route may even be associated with higher costs. Although the EU patent package ultimately aims to dispense with any translation requirement, for a transitional period of at least six and possibly up to 12 years – depending on the quality of automatic translations being developed – a patent owner requesting EU patent protection will be required to provide a full translation. If the language used in the examination proceedings before the EPO is English, a translation into one of the official languages of the EU member states is required. If the language of the examination proceedings is French or German, a translation into English is required.
Returning to the above example, and further assuming that the patent application was filed in German, in addition to the Spanish and Turkish translations required in the context of the national validations, an English translation would be necessary, thereby adding further to costs.
Another key issue is the costs associated with maintaining a granted patent. Annuities for EU patents must be paid centrally at the EPO, as opposed to the existing system where post-grant annuities are paid at the various national patent offices.
Based on statistics, an average EPC patent is validated and maintained in about four to five countries. For the EU patent the level of annuities will be the sum of the annuities currently paid for the four countries in which European patents are most frequently validated today (Germany, France, the United Kingdom and the Netherlands). This decision will result in significant savings for applicants that validate patents in a high number of countries. However, applicants that validate patents in only a few countries will experience no cost benefit.
Returning to our example, the EU patent route is unlikely to reduce the costs associated with annuities. Rather, the contrary applies because the central EU patent annuities, at the level of that currently paid for four countries, will be effective only for France, Germany, the United Kingdom and Italy (ie, the countries covered by the EU patent), while Spain and Turkey will require separate national annuities. Annuity costs for the EU patent will be lower than when using the traditional EPC route only if the number of countries to be covered is higher than in the above example (ie, more than seven) and includes EU member states that have joined the EU patent package. The situation will worsen if the United Kingdom leaves the UPC system post-Brexit.
Nature of industry
Another key aspect is the nature of the industry in which your business is operating. For some industries, such as the automotive industry, it may be sufficient to have a product (or part of it) protected in one or just a few countries to dominate the whole European market. In such cases filing for EU patent protection may simply be unnecessary and an EPC patent or even national filings may suffice. The same rationale may apply if your business is a small or medium-sized enterprise active in a limited area within the European Union.
On the other hand, in the pharmaceutical industry, in which patent protection is regularly sought in a high number of national sub-markets within Europe, the EU patent will ultimately be the more cost-efficient approach.
Another key issue is the validity of the patent after grant. The UPC system means that EU patents can be enforced in a single court action with effect for the whole EU territory (or rather, those EU states that were part of the system at the time of registration of the EU patent).
However, there is a downside to uniform enforcement in cases where an infringer attacks the patent’s validity. Under the present system, it is possible to file a central opposition at the EPO within nine months of grant. However, if this possibility is missed or the opposition is unsuccessful, any further challenge to validity must be pursued in separate national proceedings in the various countries in which the EPC patent has been validated and maintained.
Under the new UPC system, it will be possible to attack the validity of an EU patent in a single centralised procedure at any time.
Further, even if a patent-owning business decides against an EU patent, the new European patent package will strongly affect validity issues. The UPC Agreement contains a provision that the UPC will also have competence for classic EPC patents; the rationale behind this is to ensure that the UPC gets a decent number of cases right from the start. Thus, although existing as a bundle of separate national parts as explained above, these patents are likewise subject to the same risk as EU patents.
However, during a transitional period of at least seven years (and possibly up to 14 years), there is the possibility to opt out of the UPC’s competence, thereby avoiding the risk of a central validity attack. The opt-out procedure will not be accompanied by an administrative fee. The patent owner may withdraw the opt-out at any time during the life of the patent, unless the patent has already been the subject of national court proceedings. Also, it will be crucial to provide the correct information as to the owner(s) of the patent in the requests for opting out. Otherwise, the validity of the opt-out may be challenged by a party that has an interest to see the patent in the UPC system in order to attack it with effect for the whole UPC territory. This may be particularly relevant for large international corporations where internal agreements may exist as to the ownership of patents.
Strength and importance of patent
In the context of validity proceedings, a key issue is the strength of the patent (ie, the degree of likelihood that it will survive an attack on its validity). Usually, the course of the examination proceedings at the EPO or in other regions (eg, the United States and Asia), as well as additional prior art searches carried out by the patent owner, will give an indication as to the strength.
The importance of the patent for the business is another key issue. Does it form the basis for the whole operation or a key product of the business? Or is it protecting just one of a multitude of products marketed by the business?
Based on the interplay between the latter two issues, and considering the cost and territory-related key factors discussed above, the criteria outlined in Table 1 can be applied with regard to the decision to opt out.
Strength and importance of patent
The question of whether to file for EU patent protection should be extended to whether to file for EU patent protection and to stay in or opt out of the UPC’s competence for classic EPC patents. The answer very much depends on the characteristics of the business pursuing patent protection. Although in the long run, the EU patent and UPC court system are likely to be the only option for patent protection within the European Union, assuming post-Brexit issues can be resolved and the system will start at all, decisions should be made on a case-by-case basis – at least for the extensive transitional periods associated with the introduction of the new system. Thus, at least for the medium term, patent protection in Europe looks set to become even more complex, making careful management of a business’s patent portfolio more important than ever.
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