The judgment starts with the technical introduction and a summary of the background section of the patent, i.e. the prior art. Based thereon, the underlying problem of the patent is formulated. I.e. the underlying problem is not defined artificially based on a technical effect reached by a feature difference to a “closest prior art document”. The approach is rather a realistic approach and less an artificial approach: The skilled person endeavors to further develop the state of the art based on the existing state of the art. The technical problem is formulated rather broadly and generally. This is basically in line with the approach of the German Federal Court of Justice, cf. e.g. BGH X ZR 128/09 “Repaglinid” (2014) and contradictory to the problem-solution-approach performed by the European Patent Office (EPO).
Function-Oriented Interpretation of Claims
The judgement continues with a function-oriented claim interpretation, referring to the legal framework laid down by the Court of Appeal of the UPC e.g. in UPC_CoA_335/2023, NanoString/10x Genomics. Principles of claim interpretation are even summarized as a headnote in the judgement, cf.:
“When interpreting a patent claim, the person skilled in the art does not apply a philological understanding, but determines the technical meaning of the terms used with the aid of the description and the drawings. From the function of the individual features in the context of the patent claim as a whole, it must be deduced which technical function these features actually have individually and as a whole. The patent description may represent a patent´s own lexicon.”
The principles of claim interpretation would, as held by the Court of Appeal of the UPC apply to the assessment of validity. Starting the validity assessment with a claim interpretation is in line with the approach of the German Federal Court of Justice, cf. e.g. BGH X ZR 117/11 “Polymerschaum” (2012): “The examination of patentability regularly requires an interpretation of the patent claim, in which its meaning in its entirety and the contribution which the individual features make to the result of the invention must be determined.” The EPO in the past often saw no need to use the description to interpret the claims if the claims are worded so clearly and unambiguously as to be understood without difficulty by the person skilled in the art (cf. e.g. T 197/10) and thus followed another approach. It remains to be seen whether the EPO adapts its approach with current Referral G1/24 to the Enlarged Board of Appeal.
Definition of the Skilled Person – Concept of the “Team Skilled Person”
The claim interpretation is according to the judgement performed from the point of view of the skilled person in the light of their common general knowledge, which is the reason why the skilled person is explicitly defined in the judgement. Here, the UPC Central Division Munich Section applies the well known principle of the case law of the German Federal Court of Justice to define a “Team Skilled Person”. According to this principle it is assumed that the competent person skilled in the art may be expected to consult an expert or otherwise better qualified person skilled in the art or to make appropriate inquiries if they can recognize on the basis of their own expertise that they can find the solution in another field.
Assessment of Inventive Step
The UPC Central Division Munich Section follows an objective approach to the assessment of inventive step. Inventive step is to be assessed from the point of view of the skilled person on the basis of the state of the art as a whole including the skilled person’s common general knowledge. It would be relevant what the claimed invention actually contributes to the prior art. The decisive factor would be whether the claimed subject matter follows from the prior art in such a way that the skilled person would have found it on the basis of their knowledge and skills, e.g. by obvious modifications of what was already known.
Start with “Realistic Starting Point”, not with “Most Promising Starting Point”
The UPC Central Division Munich Section explicitly states that it would not be necessary to identify the most promising starting point, which is contrary to the approach of the EPO, however in line with the approach of the German Federal Court of Justice, cf. e.g. BGH X ZR 109/15 “Spinfrequenz” (2017): “For the assessment of the question whether a certain prior art suggested itself to the person skilled in the art as a possible starting point for his efforts, the classification of a certain starting point as – from the ex post point of view – the closest prior art is neither sufficient nor necessary.” In a headnote it is explicitly stated that there can be several realistic starting points. However, there would have to be a justification as to why the skilled person would consider a particular part of the state of the art as a realistic starting point. Requiring a justification is also a basic principle of the approach of the German Federal Court of Justice, cf. e.g. BGH X ZR 78/14 “Opto-Bauelement” (2016): “The choice of a certain citation or prior use as a starting point for the solution of a technical problem requires justification in principle.” The UPC Central Division Munich Section mentions a similarity of the underlying problem as justification example.
Motivation and Reasonable Expectation of Success
With respect to the assessment of inventive step, i.e. whether a claimed solution is obvious starting from the starting point, the UPC Central Division Munich Section requires a motivation or incentive to consider the claimed solution and to implement it as a next step. A technical effect or advantage achieved by the claimed subject-matter compared to the prior art might be an indication for inventive step. A feature that is selected in an arbitrary way out of several possibilities could generally not contribute to inventive step. Hindsight would need to be avoided.
The line of argument used by the UPC Central Division Munich Section seems unusual when considering the case law of the EPO, however applies some basic principles of the approach of the German Federal Court of Justice. In particular, according to the approach of the German Federal Court of Justice, the motivation for the skilled person may be only or mainly in the starting point, cf. e.g. BGH X ZR 59/16 “Kinderbett” (2018) or BGH X ZR 139/10 “Farbversorgungssystem” (2014). Moreover, according to the approach of the German Federal Court of Justice, if the skilled person had a motivation on the priority date to apply a specific method or to perform a specific experiment, the skilled person applies the method or performs the experiment, and a specific feature or a solution which is the result of said method or experiment is considered to be obvious for the skilled person (cf. e.g. BGH X ZR 65/18 “Tadalafil” (2020) or BGH X ZR 110/16 “Rifaximin α” (2018). In the present judgement the UPC Central Division Munich Section concludes that the realistic starting point provided a concrete incentive to develop antibodies that block the interaction of PCSK9 with LDLR in order to treat hypercholesterolemia and thus the skilled person as a next step would develop such antibodies. Generating and selecting such antibodies would have been a matter of routine for the skilled person at the relevant date. The skilled person would thus develop antibodies against PCSK9 that block the LDLR-PCSK9 interaction, thereby ending up with antibodies that fall within the claims of the patent. In order to further substantiate this conclusion, the UPC Central Division Munich Section applies another well-known principle of the approach of the German Federal Court of Justice, namely the examination of a reasonable expectation of success (cf. e.g. BGH X ZR 59/17 “Fulvestrant” (2019): “Whether it is obvious for the person skilled in the art to follow a solution path may also depend on the associated expectation of success.”; or BGH X ZR 150/18 “Pemetrexed II” (2020): “Whether there is a reasonable expectation of success for pursuing a solution path must be determined on a case-by-case basis […]”), which is also a rather unusual principle in the case law of the EPO.
The UPC Central Division Munich Section summarize their line of arguments with two further headnotes:
“In general, a claimed solution is obvious if the skilled person would be motivated to consider the claimed solution and would implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s). The absence of a reasonable expectation of success (or more in general: non-obviousness) does not follow from the mere fact that other ways of solving the underlying problem are also suggested in the prior art and/or (would) have been pursued by others. The decisive question that has to be answered is whether the claimed solution is non-obvious.”
“For assessing inventive step it is not the question whether the skilled person would inevitably arrive at the same result (falling within the scope of the claim or not). Rather, it is sufficient (but also necessary) for denying inventive step that the skilled person would without inventive contribution arrive at a result which is covered by a claim.”
Summary
The UPC Central Division Munich Section essentially perform their validity and in particular inventive step assessment in line with the approach of the German Federal Court of Justice, which is at least in the present case in many points contradictory to the EPO approach. It remains to be seen whether the Court of Appeal of the UPC follows the argumentation line of the UPC Central Division Munich Section in a potential second instance. Anyway, it has to be concluded that the approach and basic principles used by the UPC Central Division Munich Section in their judgement were mainly elaborated by the German Federal Court of Justice and thus also by Mr. Klaus Grabinski who is now the President of the UPC Court of Appeal.
Michael Wegerer
17.07.2024
Michael Wegerer supports clients in the fields of medical/materials/manufacturing technology as well as automotive and general mechanical engineering. He is a German and European Patent Attorney, European Trademark and Design Attorney and holds a Master’s degree in engineering.
WEB-CONTENT MEASUREMENTS – T 1422/19-3.5.07 – May 19, 2021 – non-technical features which contribute to technical character
The software discussed in this decision carries out an indirect measurement. The software measures/ determines a web page viewing area based on the measurement/ input data/ raw data of the size of a browser window. Such indirect measurements are of a technical nature, regardless of what use is made of the results (cf. G 1/19, point 99).
Object of the Invention
Estimating the size of a browser’s viewport/ web page viewing area from within a cross-domain iframe (iframe is e.g. from a separate ad server). Due to security constraints, the size of the viewport cannot be accessed directly from within a cross-domain iframe.
Claim 1 differs from the closest prior art in that Document D1 in that the size of the viewport/web page viewing area is determined by reading the size of the browser window and subtracting from the size of the browser window the average size of one or more browser elements as determined by a statistical analysis based on historical measurements.
Examining Division
The determination of the estimated size of the viewport correspondeds to a technical implementation of a non-technical rule (compute the estimated size) based on a business requirement.
Since the determined output size was an estimated value, it circumvented the technical problem of actually measuring the viewing area rather than addressing it.
Board
It is true that the method of claim 1 does not include a technical use of the calculated/estimated content visibility. In fact, the claim specifies that the information about the visibility of the content item is reported to a content sponsor.
However, the method does not merely calculate this information from numerical input data but measures “raw” information about a running web browser and processes this information to produce an estimate of a technically meaningful parameter, namely the extent to which a content item displayed within a web page is visible to the user, and on the basis of technical considerations relating to what is possible with an unmodified browser that enforces standard security constraints.
Such an indirect measurement is normally of a technical nature (see G 1/19, point 99).
Subject matter of claim 1 is inventive.
Conclusion:
The below figure shows according to G 1/19, point 85 and 86 how and when “technical effects” or “technical interactions” based on inter alia non-technical features may occur in the context of a computer-implemented process. In this decision the software/ non-technical features contribute to the technical character of the invention via the input data.
Michael Schüller
12.03.2024
Partner
Patent Attorney
European Patent and Trademark Attorney
To enable proprietors of a patent in force in Germany to effectively protect their rights under the patent, they can apply for injunctions against alleged patent infringers as a means of interim legal protection. Injunctions can, for example, be aimed at prohibiting an alleged patent infringer from distributing or manufacturing a certain patent-infringing product within the area where a patent (injunction patent) is valid on pain of a fine or imprisonment.
The effectiveness of interim legal protection is expressed, among other things, by the fact that the competent court can issue the injunction without first hearing the alleged patent infringer. In order to nevertheless also protect the rights of the alleged patent infringer, whose product is only allegedly a patent infringement and therefore may also be considered not interferring with the scope of protection of the injunction patent, German and European law foresees the means of a protective letter as a possible defense measure.
The purpose of a protective letter is therefore to present arguments to a court, which has to decide whether to issue an injunction, that speak against issuing the injunction.
An injunction is issued if an applicant for an injunction credibly substantiates a claim for an injunction and urgency (grounds for an injunction).
The content of a protective letter in the patent system is accordingly aimed at
denying a claim for an injunction by
challenging the legal validity of the injunction patent and/or
challenging the facts of infringement and/or
objecting to the enforcement of the injunction patent (e.g. exhaustion or right of prior use),
and/or
denying the urgency.
As with the application for an injunction, the reduced standard of proof of prima facie evidence in interim legal protection also applies to the corresponding protective letter.
The place of filing of a protective letter depends on the type of injunction patent.
With regard to German patents and German parts of European patents for which the lack of jurisdiction of the Unified Patent Court (UPC) has been requested (opt-out request), protective letters must be filed in the German central electronic register of protective letters (ZSSR).
With regard to European patents for which no opt-out request has been filed and European patents with unitary effect (unitary patents), protective letters must be filed directly in the UPC’s case management system.
Since opt-out requests can be withdrawn at any time, it may also make sense to file a protective letter with the UPC for European patents for which an opt-out has been requested to date.
With regard to protective letters for the UPC, it should be noted that the area where the injunction patent is valid usually extends beyond Germany, so that non-German companies that are at risk of being affected by an injunction should also be mentioned in the protective letter. Protective letters for the UPC must also be drafted in the language of the proceedings of the injunction patent and can therefore be in English, French or German.
If you suspect that competitors could wrongly accuse you of patent infringements, so that the issuance of injunctions is imminent, we will be happy to support you in defending yourself by means of protective letters.
Lukas Vogel supports clients in the fields of medical technology, manufacturing technology and automotive engineering. He is a German and European Patent Attorney, European Trademark and Design Attorney and holds a Master’s degree in engineering (Dipl.-Ing).
Biotechnology can be subdivided into three main areas: The largest area is called “red biotechnology” and is applied in the healthcare and pharmaceutical sectors. The second area of “white biotechnology” relates to the use of microorganisms in chemical production systems. The third area of “green biotechnology” is about agriculture.
Patentability criteria specific to the biotechnology field
As in other technology fields, biotechnological inventions can be patented, if they are new, inventive and industrially applicable. They must further fulfill the formal requirements of unity, clarity and sufficiency of disclosure. In addition to these general criteria, the European Patent Organisation´s member states have agreed on a number of special rules for inventions in the biotechnological field. These rules are in accordance with theEU Biopatent Directive and address rules about patentability of plants as well as patentability of genetically modified animals, and provide ethical and moral criteria for patenting in the biotechnological field, for instance.
In this article, we have reviewed the current Guidelines for Examination in the European Patent Office and the Case Law of the Boards of Appeal with a focus on patenting of biotechnological inventions. Using the most important keywords (1) of the biotechnological area, we have summarized and linked the most important text passages relating to patenting in the biotechnological field in Tables 1 and 2.
Guidelines for Examination in view of biotechnological inventions
The current edition of the Guidelines for Examination in the European Patent Office (March 2023) includes several chapters and subchapters which address special features in the biotechnological area or are specifically dedicated to biotechnological inventions, and are summarized in Table 1.
Specific instructions for EPO patent examiners concerning applications includingbiological material can be found in A-IV, 4., E-IX, 2.4.4. and F-III, 6.. As biotechnological inventions often contain nucleotide and amino acid sequence information, the Guidelines for Examination dedicate several chapters to this topic (A-IV, 5., E-IX, 2.4.2., F-II, 6., F-IV, 4.24., G-III, 4.). Formal requirements on chemical formulae can be found in A-IX, 11..
Issues concerning patentable subject-matter of biotechnological inventions can be found in B-VIII, 2.1., G-II, 4./5., G-VI, 7./9., G-VII, 13.. Sufficiency of disclosure and unity of invention of biotechnological inventions are specifically considered in F-III, 6./9. and F-V, 3., respectively. F-IV 4.5.2 and F-IV 4.12. address rules on claim drafting with a focus on biotechnological inventions.
Table 1: Guidelines for Examination for biotechnological inventions. Chapters and subchapters related to the biotechnology field were identified searching for biotechnological keywords(1)
In I-B of the Case Law, exceptions to patentability are specified. In chapter 2, the focus is set to breaches of “order public“ or morality, issues which may arise mainly in connection with biotechnological inventions (I-B 2.). One example is Case Law concerning elements isolated from the human body like sequences of a gene. Chapter 3 describes Case Law on patentability of plants/plant varieties (I-B 3.1.), animals/animal varieties (I-B 3.2.), essential biological processes for the production of animals and plants (I-B 3.3.) and microbiological processes and the products thereof (I-B 3.4.). In I-B 4., medical methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body, which shall not be granted, are addressed.
I-C 3. of the Case Law clarifies the availability of biological material to the public, and I-C 3.6.-8. specifically address issues about novelty of chemical inventions and first/second and further medical use, respectively.
In I-D 7-9., Case Law relating to the inventive step of biotechnological inventions is described.
Case Law II is about patent applications and amendments, and II-A 3.2. specifies clarity of claims, f.e. on diagnostic and surgical methods, whereas II-B 5.3. addresses the unity of claims, especially in the light of groups of chemical compounds.
In II-C on Case Law about sufficiency of disclosure, II-C 6.6.10 particularly addresses reproducibility of chemical compunds, and II-C 7. relates to sufficiency of disclosure in the biological field in particular.
Case Law laid down by the boards on the priority of inventions comprising nucleotide and amino acid sequences can be found in II-D 3.1.9.
II-E 1. focuses on Case Law on amendments with added subject-matter, with numerous specific biotechnological cases being listed in II-E 1.6.2 and II-E 1.6.3. II-E 2. describes Case Law on amendments with extension of the protection conferred. Specifically, in II-E 2.4.13 Case Law is laid down on narrowing down a generic list of chemical compounds.
Table 2: Biotechnological Case Law. Chapters, subchapters or sections related to the biotechnology field were identified searching for biotechnological keywords(1)
Taken together, in order to apply for a biotechnological patent numerous criteria specific to this area must be considered. Valuable sources for these criteria are the Guidelines for Examination and the Case Law of the Boards of Appeal. In this article, we have summarised the most important criteria for patents in biotechnology based on these two sources.
Our firm is characterised by a high level of commitment to advising founders on patent and trade mark law with regard to their innovative ideas and inventions.
Our concern is to protect innovations and to be your partner in the field of intellectual property.
Turning ideas into patents is an entrepreneurial decision based on weighing the expected strength of the invention, market potential and budget constraints.
We are pleased to offer you a free and non-binding initial consultation to get to know the law firm WINTER, BRANDL – Partnerschaft mbB and to clarify general questions!
At the EPO, data relating to software-related inventions may, under certain conditions, be regarded as data of a technical character. This means that such data will be taken into account as a distinguishing feature in the examination of inventive step. Data may have a technical character if they are so-called “functional data”. A typical example of “functional data” is data intended to control a technical device. In the following decision T 1806/20, the appellant tried to present “cognitive data” as “functional data”. The appellant relied on the earlier decision T 1194/97, which identifies a type of test method that can be used to determine whether the data are “functional data”.
Object of the Invention
A parcel delivery system that seeks to prevent damage to water-sensitive parcels by avoiding delivery to rainy destinations.
Claim 1 differs from the closest prior art (CPA) inter alia by rescheduling of the delivery based on the parcels’ sensitivity to water and a rain forecast.
Appellant
The prevention of damage to physical objects was a fundamental technical problem that was addressed throughout various areas of technology.
The appellant did not dispute that delivering multiple parcels at different destinations and planing such delivery constituted a non-technical logistics scheme.
The rescheduling of the delivery based on the parcels’ sensitivity to water and the rain forecast do not form part of the non-technical logistic scheme.
Board
Contrary to the appellant’s view, the Board judges that the requirement to ensure that parcels do not get damaged by water forms part of the non-technical logistics scheme.
The Board is not convinced by the argument that information about a parcel’s water-sensitivity is functional technical data, because its loss would impair the technical operation of the system (cf. T 1194/97, reasons, point 3.3).
It is self-evident that if a piece, either technical or non-technical, of any invention is taken out, it would not work as designed.
In the Board’s view, what T 1194/97 is saying is rather that the loss of functional data would make the system inoperable at the technical level.
In contrast, if cognitive data is lost, the system would still work but possibly produce results that would be unintended for non-technical reasons.
Thus in T 1194/97, the loss of functional data prevented the system from generating any television picture, whereas the loss of cognitive data only resulted in a meaningless television picture resembling snow.
In the present case, the loss of water-sensitivity information would not cause the system to stop working; the vehicle would still be guided, and parcels would be delivered. However, it would result in leaving water‑sensitive parcels standing in the rain – an unintended operation comparable to producing a television picture that resembles snow. The reasons why these outcomes are unintended are non-technical. In T 1194/97, it was the cognitive meaninglessness of the television picture to a human viewer; in the present case, it is the prevention of rain damage to a parcel. Hence, judged by the consequence of its loss, the water-sensitivity data is equivalent to cognitive rather than functional data.
Conclusion
This decision deals with “functional data”. Such data is intended for controlling a technical device may be considered to have technical character because it has the potential to cause technical effects. In G1/19, reasons, point 94 the Enlarged Board of Appeal has generalized this as follow:
In the context of the problem-solution approach and the COMVIK approach, such potential technical effects may be considered if the data resulting from a claimed process is specifically adapted for the purposes of its intended technical use. In such cases:
either the technical effect that would result from the intended use of the data could be considered “implied” by the claim, or
the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method.
Data is considered to be functional data when its loss would impair the technical operation of the system (cf. T 1194/97, reasons, point 3.3). This means, data is considered to be functional data, when the loss of the data would make the system inoperable at the technical level. In contrast, if cognitive data is lost, the system would still work but possibly produce results that would be unintended for non-technical reasons.
E.g. in T 1194/97, the loss of functional data prevented the system from generating any television picture, whereas the loss of cognitive data only resulted in a meaningless television picture resembling snow.
E.g. in T 1806/20, the loss of water-sensitivity information would not cause the system to stop working; the vehicle would still be guided, and parcels would be delivered. However, it would result in leaving water‑sensitive parcels standing in the rain – an unintended operation comparable to producing a television picture that resembles snow. The reasons why these outcomes are unintended are non-technical. In
T 1194/97, it was the cognitive meaninglessness of the television picture to a human viewer; in T 1806/20, it is the prevention of rain damage to a parcel. Hence, judged by the consequence of its loss, the water-sensitivity data is equivalent to cognitive rather than functional data.
Michael Schüller
7.02.2024
Partner
Patent Attorney
European Patent and Trademark Attorney
The European Patent Office (EPO) has released several Insight Reports since 2019 to inform about the latest important patent trends. Two of the ten Insight Reports released up to now relate to the biotechnology sector, which describe future and emerging technologies that are considered as groundbreaking in the medical sector. The present article focuses on the latest biotechnological Insight Report on mRNA-based vaccines, which is a particularly growing field of mRNA technologies.
/MattLphotography, Depositphoto.com
mRNA technologies as important trend in biotechnology patents
mRNA technologies and mRNA-based vaccines in particular have the potential to fundamentally change the medical field in a wide range of applications aiming at preventing and treating several of the most widespread and lethal diseases worldwide including viral and bacterial infections, cancer and malaria. mRNA technologies are suited for the development of broad medical applications for the general public, as seen in the mRNA-based vaccines against SARS-CoV-2, which made a key contribution to containing the pandemic, as well as of tailormade medical applications like personalized cancer vaccines. Accordingly, mRNA technologies provide a flexible toolbox for preventing and treating a wide variety of human sufferings. In line with this, this year´s Nobel Prize in Physiology or Medicine and the EPO´s European Inventor Award 2022 has been awarded in the field of mRNA technology.
For the Insight Report, patent information drawn from the EPO´s databases of worldwide patent data was analysed. Comparing the number of inventions in the field of mRNA-based vaccines (termed by International Patent Families related to mRNA-based vaccines) with the total number of inventions across all fields of technology combined, a significantly higher increase rate was observed for mRNA-based vaccines over the last decade.
High proportion of International patent applications as indicator for high economic expectations
The highest amount of patent applications of mRNA-based vaccines take the international route that may result in patent protection in more than 150 countries worldwide, followed by US applications, EP applications, AU applications, CA applications, CN applications, and JP applications. The high proportion of International patent applications can be seen as indication of high economic expections and a corresponding multinational commercialisation strategy, as written in the Insight Report.
The importance of patents in biotechnology
Patents are legal rights which confer on patent holders the right to exclude others from comercially using the patented invention. Patents are likely to make a significant contribution to attract investment, secure licensing deals and provide market exclusivity, especially in the most IP-intensive sector of biotechnology, as shown in the recent EPO-EUIPO study „Patents, trademarks and startup finance“. In a nutshell, patents foster innovation, technology diffusion and economic growth.
Our firm is characterised by a high level of commitment to advising founders on patent and trade mark law with regard to their innovative ideas and inventions.
Our concern is to protect innovations and to be your partner in the field of intellectual property.
Turning ideas into patents is an entrepreneurial decision based on weighing the expected strength of the invention, market potential and budget constraints.
We are pleased to offer you a free and non-binding initial consultation to get to know the law firm WINTER, BRANDL – Partnerschaft mbB and to clarify general questions!
More detailed explanations and examples on this topic will follow shortly.
The amendments concern, inter alia, Rules 126(2), 127(2) and 131(2) EPC, which deal with service by postal services and by electronic means as well as the calculation of time limits triggered by the service of a document. (https://www.epo.org/en/legal/official-journal/2023/03/a29.html)
What is the essence of the amendments?
The new Rules 126(2), 127(2) and 131(2) EPC will enter into force on 1 November 2023 and introduce a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document.
Elimination of the previous 10-day rule
These amendments eliminate the previous notification fiction of 10 days provided in Rule 126(2) EPC and Rule 127(2) EPC, according to which a document is deemed to be delivered on the tenth day after the date of the document, which is taken into account in the calculation of official time limits triggered by the delivery of communications from the EPO.
What are the reasons behind the amendments?
The EPO communicates that the changed notification fiction will result in a simplification for applicants, since it brings the EPC and PCT regimes more closely into line with each other. Thus, the revised provisions reflect the principle of instantaneous notification in the digital world.
Is there a safeguard in case of irregularities?
If a document could not be delivered, the EPO has the burden of proof. As is the case today, if the EPO is unable to prove that a document has been delivered, the notification fiction will not apply, and a period linked to that document will not be considered to have started. The document in question will then be reissued with a new date, which will then serve as the basis for applying the notification fiction.
On the other hand, where a document has been delivered exceptionally late, the new safeguard introduced in the last sentence of amended Rules 126(2) and 127(2) EPC will apply. More specifically, if notification is contested and the EPO cannot show that a document reached the addressee within seven days of the date it bears, a period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded (see also example 3, below).
What are the practical effects of the amendments?
In simplified terms, it can be said that these changes have generally shortened the time limits by 10 days. The elimination of the 10-day rule is not significant in practice for (extendable) 4-month periods. However, 10 days less in the case of the shorter and, above all, non-extendable time limits is much more significant. Examples of tight time limits would be in particular the 1-month time limit under Rule 137(4) EPC (“basis for amendments” – Article 123(2) EPC) and the 2-month time limit under Rule 63(1) EPC (“incomplete search”).
Practical examples
Some examples from the EPO are shown below to better illustrate the new Rules 126(2), 127(2) and 131(2) EPC.
Example 1:
The new Rules 126(2), 127(2) and 131(2) EPC will apply on 1 November 2023 as the effective date. The following example illustrates a case in which the document (examination report) is dated before this date, more precisely 28 October 2023. In this case, the procedure according to the previous 10-day rule applies.
The second example illustrates the new procedure under Rules 126(2), 127(2) and 131(2) EPC, since the document (examination report) is dated after 1 November 2023, more precisely 13 November 2023. The time limit therefore expires on 13 March 2024.
The third example illustrates the safeguard introduced under the last sentence of amended Rules 126(2) and 127(2) EPC. If a recipient receives the examination report (dated 13 November 2023) twelve days later, i.e. on 25 November 2023, the time limit is extended by five days (time limit extended by the number of days by which the seven days are exceeded; 12 – 7 = 5 days). The deadline therefore expires on 18 March 2024.
The new Rules 126(2), 127(2) and 131(2) EPC are intended to bring the EPO’s calculation of time limits more into line with modern practice of instantaneous notification and thus also more closely into line with the PCT. In the case of the (extendable) 4-month time limits, such as the examination report, the removal of the 10 days will not have any significant impact or consequences, whereas the already shorter time limits, such as the 1-month time limit to submit “basis for amendments”, will become even tighter (with an approximate 33% reduction in the time limit). It remains to be seen how the amendments to new Rules 126(2), 127(2) and 131(2) EPC affect practice and whether the EPO will need to make further adjustments, particularly with regard to the short time limits. This will require evaluation based on practical case studies.
Marco Stauber
31.10.2023
Marco Stauber supports clients in the field of mechanical engineering and automation technology. He is patent engineer and holds a Master of Engineering.
A Technical Board of Appeal of the EPO has referred questions to the EPO’s Enlarged Board of Appeal regarding the definition of the state of the art in relation to a commercially available product (link).
The referring Board asks whether the commercial availability of a product and partial information about its composition (e.g. datasheets) can be state of the art, even when the composition or internal structure cannot be analysed or reproduced. This is critical for the referring case, as the possibility to use such a product in the inventive step assessment is decisive. The last question considers what threshold is required for the “undue burden” criterion in r.1.4 of G 1/92.
The referring board formulated the following questions:
1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?
2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?
3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?
These questions will have relevance for the chemical field as well as many other technological fields. We now have some months to wait to see how the Enlarged Board of Appeal responds.
For more information please contact us.
Timothy Chettle
12.07.2023
Timothy Chettle supports clients in the field of medical engineering. He is European Patent Attorney and holds a Master of Engineering.
Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day, EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. The new system will start on 1 June 2023.
The introduction of the Unified Patent System has an impact on all European patents, also on “old” European patents which are already granted and in force. Patentees and applicants of European patents and applications should be aware of the implications and respond as needed. This white paper is intended to provide a basic overview of the European Unified Patent System and to support the patentees and applicants in possible steps.
You can download a PDF version of this whitepaper in the following languages: English, Japanese.
Listing of Agreement, Regulations, Rules, and Convention regarding the Unitary Patent
First of all, the legal basis is given here, which is referred to in the rest of the document.
The Unitary Patent is based on several legal provisions. First of all, there is the “Unitary Patent Package“:
One part of the Package is the Regulation (EU) No 1257/2012. This Regulation implements enhanced cooperation in the area of the creation of unitary patent protection, authorized by Decision 2011/167/EU.
A further part of the Package is the Regulation (EU) No 1260/2012. This regulation is in regard to the applicable translation arrangements.
The UPCA creates a new court (Unified Patent Court) and new substantive standards of patent law. The two Regulations create a Unitary Patent, namely a “European Patent with unitary effect” / “Unitary Patent”. The European Patent changes from a “bundle patent” to a (small) “unitary patent”.
Furthermore, there is secondary legislation:
Rules relating to Unitary Patent Protection (“UPR”). The UPR provide for the establishment of a Unitary Patent Division within the EPO and lay down the details regarding all the procedures to be conducted by the EPO.
Rules relating to Fees for Unitary Patent Protection (“RFeesUPP”). The RFeesUPP set out the amounts of all the fees and expenses payable to the EPO by Unitary Patent proprietors and how they can be paid.
Then the European Patent Convention (“EPC”) has to be considered regarding the Unitary Patent. The EPC is the Convention on the Grant of European Patents of 5 October 1973, including any subsequent amendments.
Classification of the European countries regarding the Unitary Patent
The UPCA is open to accession by any of the EU Member States of the European Union. At present, there are 27 EU Member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden.
The UPCA is not open to states outside of the European Union, such as UK. Up to date, all EU Member States except Spain, Poland and Croatia have signed the UPCA. Therefore, 24 EU Member States have signed the UPCA, wherein these Member States are called “Contracting Member States” according to Art. 2(c) UPCA (or “Participating Member States” according to Art. 2 Regulation (EU) No 1257/2012).
From the 24 Contracting Member States 17 have already ratified the UPCA (current status of ratification): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden. Please note: the Unitary Patent benefits from unitary effect in these countries who have ratified the UPCA.
The 27 EU Member States are in addition members of the European Patent Organisation. All in all, there are 39 members of the European Patent Organisation, e.g. including UK.
In the figure below all the 39 members of the EPO are shown (blue and green marked countries). The 17 contracting members having already ratified the UPCA are marked blue.
Members of EPO already having ratified UPCA (blue)
Current Status
The UPCA has been ratified by enough Contracting Member States. Therefore, the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has been in force since January 19, 2022. The implementation of the PPA will lead to the gradual launch of the system:
Initially, institution building, the election of the Administrative Council, election and appointment of judges, adoption of the Rules of Procedure and other legal texts,
Opt-out declarations are to be able to be submitted in advance to the Registry of the Unified Patent Court.
Germany has already ratified the UPCA and has filed the ratification certificate. The Unitary Patent system will enter into force on June 1, 2023. On the same day, the two Regulations (Regulation (EU) No 1257/2012 and No 1260/2012) setting up the Unitary Patent will become applicable, as well as the Rules relating to Unitary Patent Protection (UPR).
Different types of Patents in Europe
After the start of the Unitary Patent, there will be different options for patent protection:
“European patent with unitary effect” (also called “Unitary Patent”) means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012, see Art. 2(f) UPCA. This patent benefits from unitary effect in the participating Member States by virtue of Regulation (EU) No 1257/2012 who have already ratified the UPCA.
Classic “European Patent” means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/ 2012, see Art. 2(e) UPCA. A classic European Patent can be validated in the 39 members of the European Patent Organisation.
Combination of a European Patent with unitary effect and a classic European Patent. With a Unitary Patent combined with a classic European patent it is possible to seek a Unitary Patent and, in addition, validate the European patent in those EPC contracting states not territorially covered by the Unitary Patent scheme because the EPC contracting states are not Contracting Member States which have signed and already ratified the UPCA or the EPC contracting states are generally not EU Member states.
National Patent (and Utility Model if possible) in the respective European Country.
European Patents with unitary effect will have different generations in the future
The European Patent with unitary effect covers the territories of those participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of a patent by the EPO. It is also likely that the outstanding ratifications of the UPCA will not take place all at once but rather successively. Consequently, there will be different generations of Unitary Patents with different territorial coverage.
The territorial coverage of a given generation of a European Patent with unitary effect will stay the same for its entire lifetime, irrespective of any subsequent ratifications of the UPCA after the date of registration of unitary effect. In other words, a given Unitary Patent’s territorial coverage will not be extended to other Member States which ratify the UPCA after the EPO has registered its unitary effect.
The participating Member States covered by a given Unitary Patent will be listed in the Register for Unitary Patent Protection.
The Unitary Patent architecture
Pre-grant phase (including opposition, limitation, and revocation proceedings) of a Unitary Patent is based on the EPC. Therefore, the pre-grant phase for Unitary Patents is exactly the same as for classic European Patents.
The EPO is entrusted by the participating Member States with the administration requests for a Unitary Patent (= requests for unitary effect).
Unitary Patent Division at the EPO
A “Unitary Patent Division” has been set up at the EPO as a special department to deal with Unitary Patents.
The EPO departments entrusted with the procedures laid down in the EPC, namely the search, examining, and opposition divisions, the Legal Division, and the boards of appeal, will have no responsibilities in relation to Unitary Patents.
Actions against decisions of the Unitary Patent Division must be brought before the Unified Patent Court (see Articles 32(1)(i) and 47(7) UPCA) and not before the EPO boards of appeal.
Main features of a European Patent with unitary effect (Art. 3 Regulation (EU) No 1257/2012)
A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States who have ratified the UPCA.
A European patent with unitary effect may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States who have ratified the UPCA. Dropping of individual designated contracting states as with the classic European Patent is not possible with the Unitary Patent.
A European patent with unitary effect may be licensed in respect of the whole or part of the territories of the participating Member States who have ratified the UPCA.
The unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited.
The transitional regime: for which European patents can a Unitary Patent be requested?
A Unitary Patent may be requested for any European patent granted on or after the date of application of Regulations (EU) No 1257/2012 and (EU) No 1260/2012. These regulations will apply from the date of entry into force of the UPCA.
In other words, Unitary Patents can only be requested for new European Patents whose granted after the entry into force of the UPCA. Thus, if necessary, the applicant could try to delay the grant of the European Patent until the entry into force of the UPCA. Alternatively, the applicant could file a divisional European application which is also time-consuming.
Requirements for obtaining a Unitary Patent
First of all, in order to be eligible for registration as a Unitary Patent, a European patent must have been granted with the same set of claims in respect of all participating Member States (Rule 5(2) UPR; Article 3(1) in conjunction with Recital 7 Regulation (EU) No 1257/2012). Therefore, it is important not to withdraw the designation of any of the participating Member States because this would rule out obtaining a Unitary Patent.
As to the procedure for obtaining a Unitary Patent, a formal “request for unitary effect” must be filed with the EPO in writing by the European patent proprietor (Rule 5(1) UPR). This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin (see Rule 6(1) UPR; Article 9(1)(g) Regulation (EU) No 1257/2012; Article 97(3) EPC).
A Unitary Patent can also be requested for a European patent granted to multiple proprietors in respect of the same or different participating Member States as long as it was granted with the same set of claims in respect of all those participating Member States.
Only, however, if the request for unitary effect has been duly signed by all the proprietors (or their representative(s)) is their common representative entitled to act for them all. Multiple proprietors need not be listed in the request for unitary effect in the same order as in the request for the grant (EPO Form 1001) or in the European patent specification.
Translation of the Unitary Patent
During a transitional period (see below) the request for unitary effect must also contain a translation of the European patent as required under Article 6(1) Regulation (EU) No 1260/2012, as follows:
where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or
where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union.
The translated text has no legal effect and is for information only.
The transitional period is at least 6 years and max. 12 years, see Art. 6 Regulation (EU) No 1260/2012. After the transitional period a translation is no longer necessary, see Art. 3(1) Regulation (EU) No 1260/2012.
Compensation for translation costs is available for small and medium-sized enterprises (SMEs), natural persons, non-profit organizations, universities, and public research organizations having their residence or principal place of business in an EU Member State.
Costs of a Unitary Patent after Grant
In the pre-grant proceeding, the costs for a Unitary Patent and a classic European Patent are the same. For a Unitary Patent, a uniform annual renewal fee has to be paid with the EPO. According to the table below, you can see the renewal fees of the Unitary Patent after the grant. They are compared in this table to the renewal fees of a Unitary Patent together with a national UK-Patent, a Classic European Patent validated in DE, FR, UK and a Classic European Patent validated in DE, FR, UK, IT.
The annual fees for the first 10 years – the average life of a patent according to the EPO – would amount to less than € 5,000 for a Unitary Patent. The other options are roughly similar in terms of costs in this timeframe.
The costs for a payment service provider will be less for the single renewal fee of the Unitary Patent compared to possible multiple renewal fees of a classic European Patent. Therefore, the renewal fees are competitive in this timeframe, especially if more than three countries are designated for a classic European patent.
Further, a plurality of validation costs is not necessary for the Unitary Patent compared to the respective validation costs for the designated countries of the classic European Patent. For example, the validation costs for DE, FR, UK of a classic European Patent are around € 150 respectively.
The applicable law for Unitary Patents as an object of property
A European patent with unitary effect can be an object of property e. g. for license agreements, transfer, corporate restructurings, etc. Therefore, the applicable law in such cases is important.
According to Art. 7 Regulation (EU) No 1257/2012 a European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:
(a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or
(b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.
This means, if the applicant has his principal place of business e. g. in Germany, then the European patent with unitary effect as an object of property is treated as a national German Patent and German law is applicable.
In case of several applicants – e. g. two or more persons are entered in the European Patent Register as joint applicants -, point (a) above shall apply to the joint applicant indicated first. Where this is not possible, point (a) above shall apply to the next joint applicant indicated in the order of entry. Where point (a) above does not apply to any of the joint applicants, point (b) above shall apply accordingly. For example, if the first applicant has his principal place of business in France and the second applicant in Germany, then the European patent with unitary effect as an object of property is treated as a national French Patent
Therefore, if there are joint applicants from different countries the order of the applicants in the Patent Register plays an important role. The order can be changed in the granting proceeding of the European patent application.
Where no applicant had his residence, principal place of business, or place of business in a participating Member State in which the patent has unitary effect, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the State where the European Patent Organisation has its headquarters in accordance with Art. 6(1) EPC, namely Munich in Germany. In other words, for applicant(s) outside the EU, German law applies for the European patent with unitary effect as an object of property. Germany is advantageous because there are comparatively few formal hurdles. For example, patents can be transferred orally in Germany.
This referral mentioned above is static and cannot be changed by transfer of ownership. Example: Patent proprietor as first applicant A based in the USA transfers his European patent with unitary effect to French company B, German law remains applicable for the European patent with unitary effect as an object of property.
Conflict of the Unitary European patent with national rights of earlier date
For a European patent application that is intended to be validated as a classic European patent after grant, where a national right of an earlier date exists in a contracting state designated in this European patent application, there are several possibilities of amendment open to the applicant. First, that designation may be withdrawn from the application for the contracting state of the national right of an earlier date. Second, for such a state, the applicant may file claims which are different from the claims for the other designated states. Third, the applicant can limit the existing set of claims in such a manner that the national right of an earlier date is no longer relevant. For a European patent application that is intended to have unitary effect after grant, only the third option is applicable. This means an applicant for a European patent with unitary effect has to amend the set of claims of such an application accordingly. You can find further information in the Guidelines for Examination in the EPO for a classic European Patent.
In a possible action for revocation there is an important difference between a classic European Patent and a European Patent with unitary effect, please see the following example:
21.08.2023: DE application from applicant A filed.
29.03.2024: EP application from applicant B filed (first applicant from Berlin).
21.02.2025: DE application from applicant A (novelty-destroying for B) is disclosed.
20.03.2025: EP application from applicant B is granted.
1st possibility: The EP application is validated as a classic European Patent (EP-B) for several countries, including Germany (with opt-out)
In a nullity proceeding (action for revocation) EP-B is revoked for DE only before the German Federal Patent Court, because of the national right of an earlier date in DE. In all other validated countries, EP-B remains in force because only in Germany the DE application A is opposed to a national German patent respectively to a European Patent validated in Germany. In the other validated countries, the national right of an earlier date in DE is not relevant.
2cd possibility: The EP application is validated as European Patent (EP-B) with unitary effect
In a nullity proceeding (action for revocation) before the UPC, the EP-B is revoked in respect of all the participating Member States who have ratified the UPCA because of the DE application A as a national right of an earlier date. This is because the first applicant is from Berlin, Germany and therefore, according to Art. 7 Regulation (EU) No 1257/2012 the EP-B shall be treated as a national German patent (please see also above under “The applicable law for Unitary Patents as an object of property”).
Advantages of the European Patent with unitary effect
Centralized pre-grant procedure after grant and not only until grant, as in classic European patents.
Business-friendly level of renewal fees and less complexity in paying renewal fees compared to classic European patents.
No parallel litigation in the contracting members having already ratified the UPCA. Litigation is centralized at the UPC.
The European patent with unitary effect provides inventors with uniform and comprehensive territorial protection in the contracting members having already ratified the UPCA.
Validation of the Unitary Patent in several states is not necessary. The validation for a classic European Patent is a time-consuming and complex administrative process, e.g. translations have to be filed, fees charged by national patent offices, and attorney fees arise. In contrast, for obtaining the European Patent with unitary effect patent proprietors file a single request with the EPO.
For the European patent with unitary effect one single renewal fee has to be paid to the EPO. The fee has to be paid in one currency and under a single legal regime as regards deadlines and admissible means of payment. In contrast, renewal fees for the classical European Patent vary in amount, have to be paid to different national offices operating under different legal requirements.
The renewal fee level is very attractive and business-friendly. The total fees for the first ten years – which is the average lifetime of a patent – amount to less than EUR 5000. There is a 15% reduction in renewal fees for patent proprietors who file a statement on a license of right with the EPO.
Reduced Costs for small and medium-sized enterprises (SME) and other small entities.
Management of a European patent with unitary effect, e. g. transfers, licenses, and other rights, no longer need to be registered country by country in the national patent register with multiple local patent attorneys. Instead, a single registration entered in the Register for Unitary Patent Protection centrally administrated by the EPO is sufficient.
According to Rule 1(1) UPR the EPO shall be bound by decisions handed down by the UPC in actions brought under Art. 32(1)(i) UPCA.
The Structure of the UPC
The UPC is bound by EU law in the same way as any national court, Art. 1 UPCA. Therefore, the UPC shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, following Article 267 TFEU (TFEU = Treaty on the Functioning of the European Union) in particular, please see Art. 21 UPCA.
The UPC is competent (Art. 3 UPCA) to any:
(a) European patent with unitary effect,
(b) Supplementary protection certificate issued for a product protected by a patent,
(c) Classic European patent which has not yet lapsed at the date of entry into force of the UPCA or was granted after that date, without prejudice to Art. 83 UPCA (no opt-out) and
(d) European patent application which is pending at the date of entry into force of this Agreement or which is filed after that date, without prejudice to Art. 83 UPCA (no opt-out).
The territorial scope of UPC decisions:
European patent with unitary effect: all participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of this patent by the EPO, please see Art. 5 and 18 Regulation (EU) No 1257/2012.
Classic European patent: in all member states where this patent is in force, please see Art. 34 UPCA.
The court of 1st instance comprises a central division as well as local and regional divisions. It is competent inter alia for actions for infringement or revocation, see Art. 32 UPCA. In general, the jurisdiction of the court depends on the defendant’s residence or place of infringement, please see Art. 33 UPCA for further information. Local divisions are for example in: Milan, Vienna, Helsinki, Paris, The Hague, Brussels, Hamburg, Mannheim, Düsseldorf, Munich.
The central divisions are competent for isolated actions for revocation (Art. 33 (4) UPCA) and actions for declarations of non-infringement of patents and supplementary protection certificates. It also handles infringement actions if infringement takes place where no local or regional division is located or the defendant has his residence outside the territory of the Contracting Member States (Art. 33 (1) b UPCA). Because of the Brexit, London’s competence shall be divided between Paris and Munich until a new regulation is decided, wherein a decision will be issued probably during the implementation of the PPA.
The Court of Appeal in Luxembourg is competent for an appeal against a decision of the Court of First Instance, see Art. 73 UPCA.
The Court Registry is competent of the administration of proceedings and documents (all document traffic with the court in electronic form), verification of formal requirements, online register of proceedings, entire procedural file accessible to anyone, restriction of disclosure-only upon justified request and only to confidential information, please see Art. 22 ff UPCA.
Benefits of the UPC
The UPC provides proprietors with a means of avoiding the high costs, risk, and complexity associated with multiple litigations in different jurisdictions.
The UPC has specialized and highly qualified judges (including technically qualified judges) who will establish harmonized case law and increase legal certainty.
The Transitional Period regarding the competence of the UPC (Opt-out)
In general, when the UPCA has taken effect, the UPC is competent for European patents with unitary effect and for classic European patents. Exception: There is a seven-year transitional period, Art. 83 (1) UPCA, during which an action for infringement or for revocation of a classic European Patent can also be brought before national courts (the transitional period can be prolonged by up to seven years, see Art. 83 (5) UPCA). A proprietor of or an applicant for a classic European patent has the possibility to opt-out from the exclusive competence of the UPC, please see Art. 83 (3) UPCA. In other words, the patent proprietor of a classic European patent can exclude the parallel jurisdiction of the UPC and therefore opt for the exclusive jurisdiction of the national courts. The patent proprietor of a classic European patent cannot determine the sole jurisdiction of the UPC.
The UPC is competent for action for infringement or for revocation of European patents with unitary effect without exception. During the transitional period, national courts remain competent for all proceedings concerning classic European patents.
During the transitional period for classic European Patents without opt-out, a combination of national courts and the UPC is probably possible as desired. E. g. for a classic European Patent an action for infringement could be filed with the regional court Düsseldorf (Germany) and at the UPC Regional Division Milan (Italy) for all designated countries except Germany.
Preconditions for Opt-out
A proprietor of or an applicant for a classic European patent granted or applied (not for a European patent with unitary effect) has the possibility to opt-out under the following preconditions (Art. 83(3) UPCA):
Action has not been brought before the UPC yet. This means that bringing a negative affirmative action for a right before the UPC renders later opt-out effectless.
The opt-out has been notified to the Court Registry of UPC by the latest one month before the expiry of the transitional period.
Legal issues in the context of the opt-out
The opt-out shall take effect upon its entry into the register. Thus, the application for opt-out alone is not sufficient to effectively declare an opt-out. The registration of the opt-out via a CMS is probably very fast.
According to R. 5.1(b) RulesUPC, the application to opt-out has to be made in respect of all of the Contracting Member States for which the classic European patent has been granted or which have been designated in the application. Therefore, a selection decision by the patentee is not possible for opt-out.
Where the classic European patent or application is owned by two or more proprietors or applicants, all proprietors or applicants have to lodge the application for opt-out, please see R. 5.1(a) RulesUPC. Where the person lodging the application for opt-out is not recorded as the proprietor or applicant in the registers, the person shall lodge a declaration that he is the proprietor. In other words, all co-owners of a classic European patent or application must file the opt-out request. This could lead to disputes between co-owners. If there is a proprietor who is not listed as an applicant and who appears later, then the opt-out is only effective from the date of the opt-out request of the last “true proprietor” becomes effective.
If there is an incorrect application for opt-out, the opt-out only becomes effective with correction and from the date of correction, please see R. 5.5 RulesUPC.
For a (classic) European patent application opt-out is possible. If the European patent application is granted and validated as a European patent with unitary effect, then the opt-out request is deemed to be withdrawn with effect for the territory of the European patent with unitary effect, please see R. 5.9 RulesUPC.
If a divisional application is filed based on a (classic) European patent application, then the opt-out of the European patent application does not apply to the divisional application.
Ratification of an EU Member State after the opt-out
If an EU Member State ratifies the UPCA after opt-out of a classic European patent, e. g. Spain, then it is up to now unclear, whether the opt-out does also apply to the Spanish part of the classic European patent (if the Patent is validated in Spain). A uniform opt-out (i.e. also for Spain) is considered to be very likely.
“Sunrise Period” for Opt-out
The opt-out can be earmarked during the “Sunrise Period” to the start of the UPC system, please see R. 5.12 RulesUPC. Therefore, during the Sunrise Period applications for opt-out accepted by the Court Registry before the entry into force of the UPCA shall be treated as entered on the register on the date of entry into force of the UPCA. That allows patentees to file opt-outs for their existing classic European patents granted or applied before the UPCA comes into effect. Therefore, third parties cannot file claims against these patents in the UPC immediately on the date of entry into force of the UPCA (what would impede an opt-out). It is expected that the Sunrise Period takes place 3 months before the date of entry into force of the UPCA.
Opt-in (withdrawal from the opt-out)
The opt-out can be withdrawn by means of a “Request for withdrawal from the use of the opt-out”, please see R. 5.9 and 5.9 RulesUPC. This is called “opt-in”. The possibility to opt-in is unlimited in time – i.e. even after the end of the transitional period regarding the competence of the UPC. The withdrawal from the use of opt-out can be essentially declared according to the same formal rules compared to opt-out, i.e. in particular for each classic European patent separately and by effecting an entry in the register.
The preconditions for opt-in are:
Opt-out has been declared previously.
No proceeding is pending before a national court. I.e. a possible infringer, fearing an infringement action before the UPC, can file a national negative declaratory action to harm the opt-in.
Even a completed proceeding before a national court harms the opt-in.
After the opt-in, a further opt-out is not possible (no “opt-out again”).
The opt-in can only be declared for all Contracting Member States for which the classic European patent has been granted or which have been designated in the application, please see R. 5.7 RulesUPC. Hence, a selection decision by the patentee is not possible for opt-in.
Implementation of opt-out
The application to opt-out has to be declared separately for each classic European patent or application, according to previous plans. No fees are charged for the application to opt-out, but considerable organizational costs. The application to opt-out has to be filed with the Court Registry (via CMS) and not with the EPO, both after entry into force of the UPCA and during the sunrise period. Detailed procedural steps will be described at www.unified-patent-court.org.
Suggestions re Opt-out
If you are an exclusive licensee with the right to sue, then a discussion with the licensor should be sought if you wish to opt-out.
If you are a licensor you can check whether royalties are payable “as long as a contract property right is in force”. In such a case, opt-out should be considered.
The more license agreements exist for a European patent, the more likely it is to opt-out.
If you are negotiating a license agreement, please think of opt-out/validation for a European Patent with unitary effect.
Co-owners of a classic European Patent must opt out together. Therefore, if you are one of several patent owners you should contact your co-owners.
If you have several IP rights to “the same” invention, one European Patent should allow access to the UPC, one IP right to a national court. Therefore, if necessary, opt out of one IP right.
Approach with opt-out for “crown jewels” and “non-crown jewels”
Crown jewels are:
basic European patents with a long term,
European patents already infringed by competitors,
the product manufactured according to European patent is available everywhere in Europe,
the product manufactured according to patent contributes significantly to the company’s turnover,
the product manufactured according to the patent has a high profit-margin.
For a crown jewel, opt-out is recommended to avoid a centralized revocation via the UPC.
A strong European patent (e.g. because of successful opposition proceedings) which is not a crown jewel, access to the UPC could be maintained. Therefore, a revocation is unlikely and opt-out is rather not recommended.
For weak European patents, a request for opt-out should be filed to avoid a centralized revocation via the UPC. Afterward opt-in is possible (under certain circumstances, see above).
Strategic considerations on the European Patent with unitary effect
The European patent with unitary effect offers new possibilities. If it is to be in force in a large number of European countries, it offers a cost advantage compared to the classic European Patent. For example, a European patent with unitary effect is useful if it protects a pharmaceutical product or if it concerns a product for a large aftermarket (for example in the automotive area). A major cost advantage exists for 6 countries or more.
With a European patent with unitary effect a central cross-border attack against infringers in one proceeding at the UPC is possible. This is also possible for classic European patents if no opt-out is requested. But in return, there is the danger of a centralized revocation via the UPC of the European patent with unitary effect or the classic European patent without opt-out.
For important inventions, a strategic approach could be to file a divisional application in the examination procedure at the EPO parallel to a parent/previous application to obtain a European patent with unitary effect and a (slightly modified) classic European patent (with opt-out) or the other way around. This would be lead to strong protection since the European patent with unitary effect has to be attacked via the UPC and the classic European patent (with opt-out) via the respective national courts. Alternatively or in addition to the divisional application, a national patent (e.g. in Germany) could have been filed parallel, and/or a Utility Model can be branched off.
Prohibition of double patenting
At the moment (before the start of the Unitary patent system) Art II § 8 German International Patent Convention Act (IntPatÜbkG) stipulates that a national German patent loses its effect (ex nunc) when for the applicant or his successor a European patent with the same priority for the same invention has been granted. Therefore, a double patenting of a national German patent and a European patent having the same priority and the same invention is not possible (at the moment). When the UPCA is in force, then a new Art. II § 8 IntPatÜbkG is applied. Accordingly, there is no longer a prohibition of double patenting for a national German patent and a European patent with unitary effect or a classic European Patent (no opt-out) having the same priority and the same invention. This is due to the fact, that the UPC is competent for these European Patents and national German courts for the national German patent. Only, if opt-out is registered for a classic European patent, then there is still a prohibition of double patenting for the national German patent and the classic European patent (with opt-out). The new Art. II § 8 IntPatÜbkG applies to all national German patents granted after entry into force of the UPCA.
Therefore, parallel maintenance of a national German patent and a European patent with unitary effect or a classic European patent without opt-out is an option when the UPCA is into force.
Timeline for the Implementation of the Unified Patent System
Supporting users in an early uptake of the Unitary Patent by the EPO
The EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure.
These measures will be made available ahead of the entry into force of the Unitary Patent system, as of the date of deposit of Germany’s instrument of ratification of the UPCA. Pursuant to Article 89(1) UPCA, this date lies between 3-4 months before the entry into force of the UPCA and will be communicated on the EPO’s website.
First measure:
The EPO will allow early requests for unitary effect as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched. The possibility to file early requests will only be available until the start date of the Unitary Patent system. For example, if Germany deposits its instrument of ratification of the UPCA on May 20, 2022, then the UPCA enters into force on September 1, 2022. Between this periods, the applicant can file an early request for unitary effect if a due date for responding to a communication under Rule 71(3) EPC falls within this period.
The EPO would examine this early request and register unitary effect very soon after the publication of the mention of the grant of the European patent in the European Patent Bulletin if all requirements are met.
In other words, when a communication under Rule 71(3) EPC is “pending” after Germany deposits its instrument of ratification of the UPCA, then the applicant can file an early request for unitary effect.
Second measure:
The second transitional measure will provide the possibility for the applicant to request a delay in issuing the decision to grant a European patent after despatch of communication under Rule 71(3) EPC by the Office and before approving the text intended for grant. This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system and will avoid that applicants miss opportunities to obtain a Unitary Patent in the transitional phase.
The EPO will allow requests for a delay in issuing the grant as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, a request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.
For further information in regard to the first and second measures, please visit the EPO website or contact us directly.
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Currently, the new European Unified Patent System is being implemented, which is planned to start on April 1, 2023. The introduction of the Unified Patent System will have an impact on all European patents, including “old” European patents that have already been granted and are in force. Please find below more information on the new Unified Patent System.
After the start of the European Unified Patent System, an applicant of a European patent application can choose between the following options after grant:
European Unitary Patent which will be uniformly in force in (currently) 17 EU states, including Germany, France, and Italy. In Fig. 1 below, these are the EU states marked in blue.
Classic European Patent, which will be validated in one or more of the 39 member states (including Montenegro as of October 1, 2022) of the European Patent Organization, as before. In Fig. 1, these are all states marked in blue and green.
Mixture of the European Unitary Patent, which will be in force in 17 EU states (see Fig. 1 in blue), and the Classic European Patent, which will be validated in one or more of the remaining 22 member states of the European Patent Organization (see Fig. 1 in green).
Figure 1: blue and green: 38 EPC member states; blue : 17 EU states of the unitary patent
The new Unified Patent System provides for a Unified Patent Court. Patent infringement proceedings or nullity proceedings relating to a Unitary Patent can be conducted centrally via this court. The Unified Patent Court is responsible for European Unitary Patents and for classic European Patents and thus also for “old” European Patents which are still in force. However, in the case of a classical European Patent, during a transitional period of between 7 and 14 years after the start of the Unified Patent System, the national courts in the countries where the classic European Patent is validated will have jurisdiction in addition to the Unified Patent Court as before. In other words, for example, patent infringement proceedings in the case of a Unitary Patent will take place centrally before the Unified Patent Court, whereas in the case of a classic European Patent, a choice can be made between the Unified Patent Court and the national courts.
A patentee of a classic European Patent has the possibility – during the transitional period mentioned above – to exclude the jurisdiction of the Unified Patent Court. For this purpose, it is necessary to file a so-called “opt-out-request” for the classic European Patent. After the exclusion of the Unified Patent Court due to an opt-out-request, the national courts will continue to have exclusive jurisdiction for the classic European Patent.
Fig. 2 below shows the different possibilities.
Figure 2: different possibilities regarding a European patent protection
An opt-out-request can already be filed 3 months before the start of the Unified Patent system in the so-called “sunrise period”. It is currently planned that the sunrise period starts on January 1, 2023. The question as whether an opt-out-request should be filed for a classic European Patent depends on the individual case. An opt-out-request is only possible as long as no action is pending before the Unified Patent Court.
Patentees and applicants of classic European Patents should take the following steps with regard to the new Unified Patent System:
A patent proprietor of a classic European Patent should be aware in advance – i.e. preferably before the start of the sunrise period – whether an opt-out-request is necessary. If so, this should be filed during the sunrise period.
If a classic European Patent has several patentees, they must jointly decide on a possible opt-out-request. They should therefore reach an agreement – preferably in writing – regarding a possible opt-out-request.
If you have any questions about the new Unified Patent System – for example, about the steps mentioned above – we will be pleased to answer them personally.
You can also find more information on the new Unified Patent System in our whitepaper or directly download the pdf.
