1. 2014-09-101 Protecting your knowledge and creativity, the basis of your success. Patents in European Union national, European, unitary Presentation for Ukrainian Center for Innovation and Patent Information Services Kyiv - Warsaw, 2014-09-10 Jakub Sielewiesiuk

2. 2014-09-102 Protecting your knowledge and creativity, the basis of your success. 2 Overview u 1. National patents. u 2. European patents »Legal frame for European patents – EPC. »Procedure from filing to grant. »Procedure after grant – validation. »Arising problems. u 3. Possible solution: unitary patent.

3. 2014-09-103 Protecting your knowledge and creativity, the basis of your success. 3 National patents u Each country has its own patents office. u It is possible to file nationally and get a patents in a given country. u „Normal” conditions apply: national law, local official language, local representative etc. u  local patent u  local courts decide on infringement.

4. 2014-09-104 Protecting your knowledge and creativity, the basis of your success. 4 Need for improvement u National route with numerous parallel grant proceedings is time consuming, troublesome and expensive. u Would be nice to have a better way to get a patent in Europe, especially in view of free, unitary market within European Union.

5. 2014-09-105 Protecting your knowledge and creativity, the basis of your success. 5 The European Patent Convention (EPC) u Convention on the Grant of European Patents, –signed on 5 October 1973 in Munich DE; –is an international treaty within the meaning of Vienna Convention on the Law of Treaties (1969)

6. 2014-09-106 Protecting your knowledge and creativity, the basis of your success. 6 EPC Contracting States u As of u 10 September 2014: u 38 member states u 2 extension states: –BA (Bosnia and Herzegovina), ME (Montenegro)

7. 2014-09-107 Protecting your knowledge and creativity, the basis of your success. European patent - basics u EPC provides: –one centralized procedure from filing to grant, –a few post-grant procedures: »central opposition »central limitation/revocation (on request of patentee) (having ab initio effect, in all Contracting States). 7 Protecting your knowledge and creativity, the basis of your success.

8. 2014-09-108 Protecting your knowledge and creativity, the basis of your success. EPC – grant procedure u European patent applications are prosecuted by the European Patent Office, EPO. u EPO has offices in: –Munich (seat and headquarters), –The Hague, –Berlin and supplementary offices in Vienna and Brussels. 8 Protecting your knowledge and creativity, the basis of your success.

9. 2014-09-109 Protecting your knowledge and creativity, the basis of your success. EPC – grant procedure u EPO official languages are: –English –French –German u It is possible to file in ANY language (Ukrainian, Russian, Latin…), but translation into English, French or German must follow. 9 Protecting your knowledge and creativity, the basis of your success.

10. 2014-09-1010 Protecting your knowledge and creativity, the basis of your success. EPC – grant procedure - representation u Companies/parties from countries other than the 38 EPC contracting states – must act through a representative – European patent attorney. 10 Protecting your knowledge and creativity, the basis of your success.

11. 2014-09-1011 Protecting your knowledge and creativity, the basis of your success. EPC – grant procedure - representation u You may choose your European attorney from any of these 38 countries. u Practical remark: –Representatives from „new/CEE” countries have lower prices (Poland, Czech Republic, Romania, Baltic States etc.) –Representatives from „old/Western” countries – have more experience (DE, FR, UK, NL…) 11 Protecting your knowledge and creativity, the basis of your success.

12. 2014-09-1012 Protecting your knowledge and creativity, the basis of your success. EPC – grant procedure - advantages u Centralised grant procedure –relatively fast –relatively cheap (10-15.000 euro) –reliable (EPO is one of the best searching and examining authorities worldwide; highly skilled examiners  thorough examination vs. prior art  strong patent!)

13. 2014-09-1013 Protecting your knowledge and creativity, the basis of your success. EPC – granted European patent u After grant the European patent –is published in the language of proceedings (EN/FR/DE) with claims translated into the other two official languages; –in order to take effect in selected Contracting States the patent has to be validated in those States.

14. 2014-09-1014 Protecting your knowledge and creativity, the basis of your success. EPC – validation u In the validation procedure, the European patent is transformed into a bundle of national patents in selected Contracting States. u These patents are subject to national law. In particular, disputes arising from such patents are governed by national law.

15. 2014-09-1015 Protecting your knowledge and creativity, the basis of your success. EPC – validation u In most Contracting States, validation of European patent requires: –appointing a local patent attorney, –filing a translation of the whole patent as granted into the official language of the State, –paying national official fees.

16. 2014-09-1016 Protecting your knowledge and creativity, the basis of your success. Validation - disadvantages u So… we are back in the national systems, having paid a lot and having a bundle u of independent national patents: –rights resulting from patent not necessary the same in each country, –independent court proceedings in case of infringement... –...possibly with different outcome!

17. 2014-09-1017 Protecting your knowledge and creativity, the basis of your success. Remedies – London Agreement - reduce translation cost u Improvement under London Agreement: –no translation at all – patent valid automatically: France, Germany, Ireland, Lichtenstein, Luxembourg, Monaco, Switzerland, UK; –translation of claims only: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Macedonia, Netherlands, Sweden, Slovenia;...full translation still required in all other countries (including Poland)...

18. 2014-09-1018 Protecting your knowledge and creativity, the basis of your success. Remedies – unitary patent (not yet in force!) u In view of the common market in EU, it is important to improve the European patent system and make it more competitive and attractive: –turn European patent into a unitary right, –form centralised Patent Court.

19. 2014-09-1019 Protecting your knowledge and creativity, the basis of your success. Remedies – unitary patent u European patent should form a unitary right. u - applications filed with the EPO and patents granted by the EPO based on the EPC; u - unitary effect to be requested within one month from grant; u - in long term: no translations after grant required (in 12 years machine translation should be good enough); before that – translation into English.

20. 2014-09-1020 Protecting your knowledge and creativity, the basis of your success. Remedies – European Patent Court u Another important institution associated with European patent as a unitary right should be centralised court – Unitary Patent Court –competent in disputes resulting from European patents –and whose judgements should be binding on the whole territory in questuion.

21. 2014-09-1021 Protecting your knowledge and creativity, the basis of your success. European unitary patent - territories u European unitary patent – will have the effect in countries, who: u - agreed to accept unitary patent regulations; u - agreed to accept and implement Unitary Patent Court regulations. u In practice: 25 of 28 EU countries (ES, IT, PL – outside the system so far). u Ratifications pending in 25 EU countries.

22. 2014-09-1022 Protecting your knowledge and creativity, the basis of your success. Thank you!