For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 18 February 2014

Goldilocks 2: Return to the bear pit - is the European Patent Office gearing up for the Unitary patent?

The story of Goldilocks is familiar to all. A little blonde girl breaks into a house (probably causing criminal damage) belonging to a bear family, trespasses, steals food, then runs away when the owners return. As the first ever recipient of an ASBO, she certainly is a wonderful role model for young children.

There is no contest between Kat and Bear
The bear family includes a big daddy bear, a medium bear and a small bear, and one thing that they all had in common is that they all could have applied for a European patent and each would have been treated the same during the process if they are nationals of a contracting state with an official language other than English, French or German.  Decision CA/D 19/13 (here) of the Administrative Council of the EPO will change this.

Current provisions
Rule 6(3) of the Implementing Regulations to the European Patent Convention (EPC) will be amended from its current guise:

Where a person referred to in Article 14, paragraph 4, files a European patent application, a request for examination, an opposition, an appeal, a petition for review or a request for limitation or revocation in a language admitted in that provision, the filing fee, examination fee, opposition fee, appeal fee, fee for the petition for review or the limitation or revocation fee shall be reduced in accordance with the Rules relating to Fees.

Article 14, paragraph 4 EPC applies to natural or legal persons (or any sized bears) having residence in a contracting state, or nationals of a contracting state, filing the stated documents in an official language of that contracting state that is not English, French or German.

Article 14(1) of the Rules relating to fees (here) allows a 20% reduction in fees for persons in the category described in Rule 6(3) and A14(4).

Proposed change
Rule 6(3) of the Implementing Regulation to the EPC will be amended to remove the reduction in fees for filing an opposition, an appeal, a petition for review or a request for limitation or revocation in a non-official language, leaving a reduction available only in the filing and examination fees.  This, thinks the IPKat, is rather mean.

Rule 6 will be supplemented with the further provisions of:

(4) The reduction referred to in paragraph 3 shall be available for:
(a) small and medium-sized enterprises;
(b) natural persons; or
(c) non-profit organisations, universities or public research organisations. 
(5) For the purposes of paragraph 4(a), Commission recommendation 2003/361/EC of 6 May 2003 concerning the definition of micro, small and medium-sized enterprises as published in the Official Journal of the European Union L 124, p. 36 of 20 May 2003 shall apply. 
(6) An applicant wishing to benefit from the fee reduction referred to in paragraph 3 shall declare himself to be an entity or a natural person within the meaning of paragraph 4. In case of reasonable doubt as to the veracity of such declaration, the Office may require evidence. 
(7) In case of multiple applicants, each applicant shall be an entity or a natural person within the meaning of paragraph 4.

Unlucky daddy bear!

Small and medium sized enterprises will still be able to take advantage of the reduction of fees (increased to 30%) by filing in a non-official language.  So, even meaner, although the fee reduction is somewhat larger, the category of eligible recipients of the fee reduction has been severely reduced.

This Kat is getting a severe case of déjà vu:  he has seen something resembling new Rule 6(4) before.

Unitary Patent
A quick look to Article 5 of Council Regulation 1260/2012 relating to Unitary patent protection with regard to the applicable translation arrangements provides the answer:

Reimbursement of all translation costs up to a ceiling are available for applicants filing patent applications at the EPO in one of the official languages of the Union that is not an official language of the EPO.

Article 5(2) states that the compensation will only be available for "SMEs, natural persons, non-profit organisations, Universities and the public research organisations having their residence or principal place of business within a Member State" - precisely the same categories as in new Rule 6.

The original intention of drafters of the EPC that the EPO should avoid enquiries into the nature of the applicant (see for example Article 60(3) EPC) seems to be slipping away, and the EPO must now dip their fingers into the murky world of assessing whether a company is a SME or daddy bear in disguise.

Many thanks to Roufousse T. Fairfly who bisected comments from other users such as: “It bothers me that whiners such as yourself…” and “Do you really not see how wrong this is, or do you just not care?” by providing an interesting and insightful comment on the present issue.  Many thanks also to Paul Beynon for co-authorship and ever more colourful metaphors.




9 comments:

Anonymous said...

Does this mean that only small and medium enterprises but not micro enterprises are entitled to the reduction? While the EU doc. waffles on about "autonomous Enterprises", from a quick reading, there does not appear to be a bar to setting up an SME daughter company as the applicant to benefit from the reduction.

I'm a robot said...

This amendment of the EPO fees is clearly connected with the compensation scheme for unitary patents which is now discussed by the Select Committee.

Let's see what will be proposed.

Darren Smyth said...

To the first anonymous:

1) I think micro is included within SMEs - the Commission recommendation clearly says so

2) My understanding of the Commission recommendation is that linked companies count, so if you are linked to a non-SME you are not an SME, so I don't think is it as easy as all that to circumvent.

To I am a robot, Er, yes that was the whole point of the post. See the bit headed "unitary patent".

Anonymous said...

What will the sanction be if the Applicant declares himself an SME, and the Office decides otherwise? Or if the Applicant is an SME, but then assigns the patent immediately to another? Given that any person may apply for a patent, but the patent may only be granted to the inventor or his heirs or assigns, I can see SME patent filing companies applying for patents on behalf of inventors and applicants, and then immediately assigning the rights in the application to the rightful owner.

What larks!

I'm a robot said...

Darren, sorry, I am a robot, so I lack inventiveness ;)

However, by connecting my two transistors, I can imagine that the EPO could be tempted to deduct the 30% reduction on the EPO filing fees from the compensation for the unitary patent.

I do not see any other reason for introducing small entity fees at the EPO right now, after a good 41 years.

Given the political pressure to keep the annuities as low as possible and the zero-Euro fee for requesting the unitary effect, I guess that the EPO is facing some budgetary problem in implementing Art. 9 UPR.

Darren Smyth said...

To I'm a Robot (Second comment)

I think you are very inventive. This is a very interesting idea. I don't see much legal basis for it, but neither does it seem completely impossible.

I think you realise, but other readers may not, so I think I better state for clarity that the compensation scheme according to Article 5 of "Council Regulation 1260/2012 relating to Unitary patent protection with regard to the applicable translation arrangements" is to be "funded through the fees referred to in Article 11 of Regu­lation (EU) No 1257/2012" - ie renewal fees of the Unitary Patent.

That does not seem to me to prefigure that one fee reduction could be offset against another fee compensation, but, as I said, this is not impossible.

Roufousse T. Fairfly said...

Darren, thanks for the Kudo.

Lest people think I read the OJ at the time of day when I should feed my hungry beast, I first read about this in the Le Blog du Droit Européen des Brevets.

Anonymous said...

I for one am NOT impressed with the notion that "bisecting comments" is given applause here, when the comments where on a subtopic that is being misrepresented as RTF's views were NOT on that subtopic.

Anonymous said...

Interesting.

Because the silly (yes, silly) rule that ticking a box that yields a small sentence in Dutch (or whatever language) entitles most of my domestic clients to a 30% discount on the examination fee. Whereas similar applicants from - among others - France and Germany are not entitled to such privileges. Just because of some silly language issue.

My clients love it, so I am happy with it. Even though in the end, it boils down to a 2% - 4% reduction of the total cost for patent preparation and prosecution.

But let us be frank. In the end, drafting in English and for some people in French or German, is a task that may be executed without major issue by any university level engineer, I'd say (because that is what patent attorneys are, in the end). Then why priviliging these non-native speakers?

I do realise I am shooting myself in the foot and in the feet of my clients as well.

Or I am not, because in my opinion, all SMEs in Europe should be entitled to a reduction similar to that provided by the USPTO. In order to create a real united European economical market, a level playing field. And because this encourages these SMEs to protect the fruits of their innovation and because of that, to keep on innovating.

Because ALL European SMEs deserve some slack on fees, as the engines behind our pan-European economical system.

(yes, USPTO does not discriminate on the provenance of the SMEs and neither should the EPO IMHO - but that is another point of discussion I am ready to take on as well)

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