For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 17 December 2009

Latest news of EU patents and ugly acronyms

Thanks to the European Patent Office's presence on Twitter the IPKat can inform his readers of the latest version of things-to-come regarding the Community patent. According to the EPO webpage headed "EU Council agrees on next steps regarding the Community patent (EU patent)" the Kat-- who has not visited this topic since 5 December -- learns as follows:

"At the last [probably not the last, but certainly the latest] Competitiveness Council on 4 December 2009, Ministers reached agreement on a number of key elements constituting the future EU patent system.

Ministers agreed on:

* a draft Regulation on the EU patent - General approach;
* a set of conclusions on the features of the envisaged unified patent litigation system
* the arrangements related to the renewal fees and their distribution for the EU patent
* a system of Enhanced Partnership between the EPO and central industrial property offices.
The substance of the agreed package as set out above comprises neither the translation arrangements for the EU patent [that information could be inferred from the use above of the word 'agreement' ...] nor the details of the EPC revision necessary to accommodate the EU patent [The IPKat feels tempted, when the time comes, to run a competition to see who can offer the most succinct and elegant revision; he's sure his readers could do a great job of it].

With the entry into force of the Lisbon Treaty, the European Union replaced and succeeded the European Community and has been endowed with legal personality. Therefore, the Community patent is now called the "EU patent" and the "European and Community Patents Court (ECPC)" has been renamed the "European and European Union Patents Court (EEUPC)" [Ugh. The IPKat hopes the EU never renames him].

The European Patent Office supports the creation of an EU patent and the establishment of a ... EEUPC, and sees the decisions taken at the recent Competitiveness Council as a promising step forward, although it remains difficult to assess when this will translate into an operational system [Another translation problem, but less politically loaded than the usual one].

Draft Regulation on the EU patent - General approach
The draft Regulation on the EU patent mainly deals with post grant issues, eg. the effects of the EU patent, compulsory licences, or the lapse and invalidity of the EU patent. The translation arrangements are no longer part of it. As a next step, the European Parliament will now have the opportunity to debate the EU Patent Regulation via the co-decision procedure (now referred to as "ordinary legislative procedure" under the Lisbon Treaty).

The basic concept underlying the future EU patent system is that the EU accedes to the European Patent Convention (EPC) and that the EPO grants EU patents. Such patents will be European patents having unitary effect in the territory of the European Union [That's the easy bit].

Revision of the EPC

On the basis of this concept, a revision of the EPC is necessary to put up the EU patent and to allow the EU to accede to the EPC. Issues such as the voting rights of the EU, the establishment of a Select Committee of the Administrative Council or the parallel designation of both the EU and its Member States in a European patent application will also have to be regulated in the EPC. The outcome of a EU patent related revision conference (Revision Act) will then have to be ratified by all EPC Contracting States (36 at present). ... the EPC 2000, which was revised in November 2000 at a Diplomatic Conference comprising only a fraction of the present EPC Contracting States, only entered into force on 13 December 2007, which gives an idea of the time-frame for the realisation of the present endeavour should it finally come to pass [Not sure: the delay here struck the Kat as being the consequence of low-priority apathy rather than high-priority vigour. Different considerations surely apply now.].

Translation arrangements
The Lisbon Treaty (Article 118 TFEU) has provided a new, specific legal basis for the creation of unitary intellectual property titles within the European Union. ... unanimity is still required for deciding on the language arrangements of such titles (and consultation of the European Parliament), all the other aspects thereof shall now be decided upon by qualified majority under the ordinary legislative procedure (co-decision procedure).

... the EU Council conclusions now propose that the translation arrangements for the future EU patent be dealt with in a separate Regulation. This obviously aims at focusing the future discussions on the language regime. As a next step, the European Commission will have to elaborate a proposal for a Regulation on the translation arrangements. It is unclear whether under Spanish EU Presidency a proposal will be presented [The Spanish have been characterised both as a block on progress and as valiant fighters for the protection of the interests of a large Spanish-speaking non-EU interest]. The future translation arrangements would have to be adopted by the Council acting unanimously [Good news for the Maltese?].

According to the EU Council conclusions, it is foreseen that that the EU Patent Regulation comes into force together with the separate regulation on the translation arrangements for the EU [... or not at all?].

The Council Conclusions in detail
Renewal fees

.. Select Committee of the Administrative Council should, once the Regulation on the EU patent enters into force, fix both the exact level of the renewal fees and the distribution key for their allocation. It is foreseen that the EPO retains 50% of the renewal fee income.

Enhanced Partnership

... the Enhanced Partnership ... should enable the Office to make regular use, where appropriate, of the result of any patent search carried out by a central industrial property office of the EPC contracting states on a national patent application, the priority of which is claimed in a subsequent filing of a European patent application. Such utilisation should be carried out in accordance with the already established utilisation scheme of the European Patent Network (EPN) among the EPC states. The Enhanced Partnership should be based on a European Standard for Searches (ESS), containing criteria for ensuring quality which are based on the agreed quality systems of the EPN. In addition to searches, the ESS should include standards on inter alia training, tools, feedback and assessment.

Main features of the ... EEUPC

The EEUPC would be established by a "mixed agreement"" (i.e. the competence to negotiate and conclude the envisaged agreement would be shared by the EU and its Member States) between, on the one side, the EU and its Member States and, on the other side, non-Member States which are Contracting States of the EPC.

The envisaged international treaty would establish a patent court system which has exclusive jurisdiction in respect of infringement and validity issues concerning European and EU patents. The EEUPC would comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance would comprise a central division, as well as local and regional divisions in the contracting states to the agreement.

There are many outstanding issues regarding the unified patent litigation system which remain in dispute, such as the composition of the panels, the competence of the divisions of the Court of First Instance, the notion of technical judges, or the language arrangements.

In June 2009, the Council submitted a Request to the European Court of Justice (ECJ) on the compatibility of the draft Agreement with the EU Treaties. The judicial review of the ECJ takes place before the conclusion of the agreement and is given in the form of an opinion. The opinion is expected at the earliest by summer 2010 [This is useful information. The Kats have taken turns to look for it almost daily since they learned of the Request] ..."
TFEU here
TOFU here
TOFFEE here

3 comments:

Anonymous said...

Regarding the EEUPC, the biggest danger is the potential for bifurcation of validity and infringement cases.

See the 4 December IPKat article for the big 'debate' as to why this is so extremely dangerous.

Anonymous said...

As to the IPKat's comment "[Not sure: the delay here struck the Kat as being the consequence of low-priority apathy rather than high-priority vigour. Different considerations surely apply now.]", I am curious on what the Kat's optimism is based. After all, both the Community Patent Convention of 1975 and the Agreement on Community Patents of 1989, which dealt with the very same subject, failed to enter into force because of ratification problems, even though at that time only 9 (1975) and 12 (1989) ratifications were required. We should not forget that at the time, the Coundil of the then EEC repeatedly urged the EEC Member States to speed up the ratification process, but nothing happened.

As regards the EPC2000, we should not forget that its "early" entry into force already after 7 years was triggered by the large number of Central-European states that joined the EPC after the diplomatic conference that adopted the EPC2000. These accessions to the EPC1975 also included accessions to the EPC2000, so that the threshold number of ratifications / accessions that triggered entry into force 2 years later was met already after 5 years.
Presently, there is no comparable high number of new EPC accessions, so that it is very unlikely that any new EPC amendment will enter into force within 10 years.
In short, the path now chosen is nothing but a recipe for failure, and the agreement of December 4 is nothing but an agreement on the establishment of roadblocks. So, those who are opposed to the very idea of further improvements (e.g. because they make their living out of the present inefficiencies) have nothing to worry about for a very long period.

Anonymous said...

Does this mean that we are going to have to start replacing the 'Community' of the terms Community Trade Mark (CTM), Registered Community Design (RCD), and Community Patent with 'Union'?

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':