Uncertainty surrounding the European Unitary Patent continues as Germany’s constitutional court recently halted legislation to ratify it.
Upon receipt from an unknown source, Germany’s constitutional court halted legislation to ratify the European Unitary Patent (UP). The complaint alleged that the UP and Unified Patent Court (UPC) break German law. “The complaint has been taken seriously enough that the court has directed Germany’s federal president not to put forward legislation to make the new system law.”
As the story develops, more details will follow.
To read more about the ruling, please click here.
Good afternoon. Read on for the latest IP headlines from the week of November 30th:
- The committee in charge of the EPO’s activities in regards to the Unitary Patent reached an agreement on the distribution of income generated by the payment of the uniform renewal fees by patent owners for maintaining their Unitary Patent. Read more on this here.
- The EPO signed a 3-year cooperation plan with the IP office of Serbia, as part of the 95th anniversary of IP protection in the country. Read on.
- Great read from the NY Times, “The Best Way to Fight a Patent Demand May Be to Do Nothing: Researcher finds that many companies resolve threats by simply filing them away” Click here for the complete article.
- Congratulations to RWS Group for winning the Golden Bridge Trade & Export Award in the category for best British medium-sized company last week. The ceremony was held on November 26th in the Belgian Luxembourg Chamber of Commerce Clubhouse.
Have a great weekend. Feel free to follow us on Twitter @inoviaIP for more updates.
Guest post by Sofia Willquist and Sidsel Hauge of Awapatent
For a long time the possibility of having a unified coverage of patent rights throughout the European Union has been discussed. Several attempts have been made to create the EU patent, but all have previously failed. The latest attempt, however, was successful, to the extent that an Agreement on a European patent Court could be signed, as an enhanced co-operation between 25 of the 28 member states (Spain, Italy and Croatia are currently not members of the enhanced co-operation). The Agreement must now be ratified in at least 13 of the member states (currently 7 have ratified ) in order for the Regulation on the European patent with unitary effect to enter into force.
RWS inovia and Managing IP Magazine recently presented a webinar about Brexit, the possible effect the fate of the Unitary Patent (UP) in 2017 and future filing strategies throughout Europe. Speakers included Reinhard Ottway, CEO of RWS Group, Gary Smith, Former Director of the PCT at WIPO, Justin Simpson, Founder of inovia, and was moderated by James Nurton, Managing IP Magazine.
Justin Simpson started things off with an overview of the European patenting system and issues applicants might run into when filing in Europe. Problems included the high costs associated with validating and the escalating costs of enforcing throughout a patent’s lifespan. Complicating matters further, courts are not bound by rulings in other filing jurisdictions, contributing to conflicting individual country decisions.
The solution to the current state of patenting in Europe was the UP – a treaty giving a single right to all European countries and a single court with jurisdiction over all EU nations. It was agreed in 2013 and required 13 countries to ratify (including the UK, France and Germany), eventually coming into force across 26 EU countries. With the UK dropping out, this now leaves the question of what other “Big Three Countries” will step in to ratify the treaty in their absence.
Gary Smith, Former Director of the PCT at WIPO, discussed the impact of Brexit on the PCT. For UK residents and nationals, there will be no immediate impact on the filing of international applications since the UK will remain a European Patent Organization member state. The UK will continue to use the EPO as an international search authority and preliminary examination and the UK will still not be allowed to be designated an International Search Authority and International Preliminary Examining Authority.
Reinhard Ottway, CEO of RWS Group, concluded the discussion of when and if the UP might launch and who will use it (if it does). Before Brexit, ratification by Germany, France, and UK as well as 10 other EU members was considered a formality and it was widely agreed upon by most that the UP was expected to come into force in 2017.
The Brexit decision came along, throwing a wrench in this. On June 23, 2016, the British electorate voted in a referendum that Britain should leave the EU. For now, the UK remains and the process to exit the EU is expected to begin in March of 2017 and could take up to two years (possibly longer for them to fully exit). Until then, the UK remains an EU member state.
The future of the UP is unknown because there are so many uncertainties around the agreement. As Mr. Ottway stated, ” it really depends on what tinted glasses you have on – an optimistic or pessimistic outlook.”
- 2017 still possible: The UK ratifies whilst it is still a member of the EU to help get this off the ground.
- UK participation still possible: During the two year exit negotiation period all EU members change the UP agreement such that non-EU members can become/remain members of the UP and UPC.
- Quick replacement of UK: The remaining members amend the current agreement to replace the UK as one of the big three with Italy and proceed without the UK even before or shortly after it exits the EU.
- Long delays: The UK does not ratify and everything is held up until it officially leaves the EU. A third country, Italy, replaces the UK and the process is delayed by up to six years. The London court has to be replaced, the fee allocation system has to be renegotiated.
- Implementation derailed: In view of all the uncertainties, politically, legally and procedurally, the UP and UPC as currently intended are effectively derailed and it will take many years to kick-start this process again to get to where we were prior to the referendum.
Other factors contributing to if and when the UP will come to fruition include political will by the UK Government to prioritize ratification. This seems unlikely in the current climate with talks of a “Hard Brexit” (i.e. no accession to the European Economic Area (EEA) if Freedom of Movement is not curtailed). Others are debating the legal framework as there are differing opinions whether UP membership of a non-EU country is legally possible. Lastly, there is currently no foreseeable timeline for procedural steps to resolve the UK dilemma and move ahead with the implementation of the UP and UPC with or without the UK.
If and when the UP is ratified, is it worth it for companies and firms to file internationally this way? As Mr. Ottway explained, it really depends. For certain industries (automotive), it is not uncommon to seek protection in only four or fewer than four countries in Europe. Here, the UP route is not necessarily financially viable, especially if it does not cover the UK. About 50.6 % of all granted European patents are currently validated only in 3 EU countries or less (including the UK), 70.5 % in four EU countries or less. Portfolio management through abandoning patents in selected countries is not possible.
While the patent industry is clearly keen to see the UP and UPC, everyone RWS inovia has spoken with highly values the fact that the old system is available and there was a long UPC opt-out period, giving applicants the option of holding back. The success of this new system depends on how widely and how quickly it is taken up by applicants. While the pro-UP sentiment was growing pre-Brexit vote, nobody can be sure how cost and risk will influence its success. Although, it is certain that a UP which does not cover the UK will be less attractive.
While we wait to see the fate of the UP, it’s important to keep all options open. Filing via EP and PCT routes will ensure that the UP is available for these applications if and when it does come in. The national route to Great Britain is also available via PCT national stage entry without going EP regional. Also, for applicants which only require protection in up to four countries in Europe, it may be worth considering national filings. RWS inovia has seen this trend with several of our automotive clients. Even if the UP comes to fruition it will not be a real alternative in terms of costs.
Strategic decisions are hard to make with so many uncertainties. At the moment, there is more that we don’t know compared to what we do. Click here to learn more.
What we know
- There will be a Brexit and the UK Government will invoke Article 50 of the Lisbon Treaty by the end of March 2017.
What we don’t know
- Which shape will Brexit take (hard or soft, inside or outside the EEA)?
- Will there be a UP/UPC?
- If there is a UP, when will it come?
- When the UP does come, will the UK be in or out?
Click here to download the webinar slides and listen to the recording
If you have any questions about this webinar, or want to speak to someone about your filing options, contact us here. Also, feel free to leave comments about your views on the UP.
After months of uncertainty since the United Kingdom voted in favor of Brexit, the UK government has given a green light for the Unified Patent Court and Unitary Patent to proceed.
In a statement from the UK Minister of State for Intellectual Property, Baroness Neville-Rolfe notes: “As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. The new system will provide an option for businesses that need to protect their inventions across Europe.”
She also went on to add that ratification “should not be seen as preempting the UK’s objectives or position in the forthcoming negotiations with the EU.”
The United Kingdom will continue to prepare for ratification over the next few months and will work with the Preparatory Committee to bring the Unified Patent Court into operation at the earliest possible date.
This move goes against the expectations of many IP experts who predicted that the UK would pull out of the agreement along with an EU exit. One of the most important branches of the UPC is planned for London where rulings on patent disputes in pharmaceuticals and life sciences will take place.
The Unitary Patent (UP) is a response to the European patent system. When ratified, the UP will guarantee protection for inventions in 26 countries throughout Europe.
RWS inovia is set to complete a successful 2016 and we look forward to continue to service your IP needs in 2017. Highlights from the past year include:
- We hold the title of the #1 PCT firm in the United States for the sixth consecutive year – RWS inovia handled the deadlines of 1,419 PCTs. Now in its eighth year, Managing IP’s list of law firms instructing the foreign filing of the most PCT patent applications is based on details in WIPO. To complete the tables, PCT applications with a priority date between July 1, 2013 and June 30, 2014 were extracted. These correspond to applications set to enter the national stage between January 1 and December 31 of this year. Read more.
- RWS inovia and PatBase integration complete – The RWS inovia platform and PatBase were formally integrated in October. Our 1-click quote feature now obtains patent information from the PatBase system instead of from WIPO. Read more.
- Annual Global Patent & IP Trends Indicator was released – Now in its seventh year, the RWS inovia Indicator is a go-to resource for identifying the trends having the greatest impact on the foreign filing strategies of patentees around the world. Released in June, key findings included respondents cutting foreign filing costs by filing in fewer countries, bringing steps in-house and negotiating with their foreign counsel. Download here.
- China leads global patent application growth – China propelled global patents to a new record of 2.9 million applications in 2015. They were the first office to file more than a million applications in a calendar year. This is an overall growth rate of 7.8% over 2014 and the sixth year in a row patent prosecution rose according to WIPO’s annual World Intellectual Property Indicators (WIPI) report. Read more.
- UK set to ratify Unitary Patent – After months of uncertainty since the United Kingdom voted in favor of Brexit, the UK government gave a green light for the Unified Patent Court and Unitary Patent to proceed. We conducted a highly attended webinar on the subject matter in early October. Read more.
- The top global destinations for protecting your IP – Curious to know how to maximize your IP protection across the globe? Our Founder, Justin Simpson, sat down with Small Business Magazine to highlight the hot 5 IP locations in May. Read more.
Happy New Year, readers! Follow us on Twitter @inoviaIP for daily IP and foreign filing updates.
The Unitary patent was initially established with the intent of providing a single European patent covering 25 nations. Countless roadblocks have occurred leaving applicants wondering if and when the EU patent would come into effect. With the recent decision surrounding the Brexit, it looks unlikely that applicants will be able to secure patent protection universally throughout Europe.
The idea behind the Unitary Patent was that, once you got your application through the European Patent Office, instead of having to validate your patent in all the individual European countries, you could pay one fee and the patent would be valid in all the signatory countries (25 of them). It was a great, cost saving idea that would make it far more affordable to obtain broad patent protection throughout Europe.
The terms of the Unitary Patent were agreed in 2012/2013 and it needed to be ratified by 13 of the 25 countries, including the UK, France and Germany. France and Germany ratified it. Eight other countries ratified it (that makes 10 if you follow my math). The UK legislation needed to ratify it was passed by both Houses of Parliament in March 2016 (after just 15 minutes of debate). The only thing left to do was for the UK to notify the EU that they had ratified the UPC and wait for two other countries to ratify it. In all likelihood it would have come into force early next year.
But then there was Brexit.
Whilst it will still be possible to validate a granted European patent in the UK, the dream of a single European patent is now effectively dead.
Notably, nearly a month on from the “leave” decision, none of the official Unitary Patent sites include anything in their news about Brexit and its impact on the Unitary Patent. Why? They are probably too angry to trust themselves to put anything in writing.
So, patenting in Europe will remain as expensive as it always has been for some time to come.
But what about Trademarks and Community designs? Well, the situation there is clearer: they will definitely become more expensive for UK companies.
Right now it is possible to get a Europe-wide Trademark (to protect your logo/brand name) and a Europe-wide Design (to cover the shape of your innovative product). But the laws behind those IP rights are governed by the European Union and are only available to EU members. Once the UK exits the EU, those IP rights will no longer cover the UK.
That means, if you want to register your brand in the future, you’ll need to do it in both the UK and, separately, in the EU, thus increasing your costs. The same situation will apply for Designs.
It will also be interesting to find out what happens to existing European Community Trademarks and Designs when the UK leaves the EU. Will the rights in the UK become invalid? Will UK companies need to re-register all their old European marks and designs in the UK? If so, that will mean a whole bunch of new filing fees UK companies will need to pay.
Time will tell how all the details will pan out, but you can be confident that the end result will not be cheaper IP protection for UK businesses. The Unitary Patent has been red-carded at the last minute.
Close, but no cigar.
Earlier this month, our Founder, Justin Simpson published an opinion article with Real Business Magazine discussing how the recent Brexit will effect the upcoming Unitary patent.
The terms of the Unitary patent were agreed in 2012 & 2013 and needed to be ratified by 13 of 25 countries (including the UK, France and Germany). The UK legislation passed the UP by both Houses of Parliament in March 2016. The last thing left was for the UK to notify the EU that they ratified the UPC and wait for two other countries to ratify it. In all likelihood, it would have come into force sometime early next year. But then there was the Brexit.
Read Justin’s article in entirety here. Do you agree with his argument that there is a slim chance the Unitary patent will come into fruition early next year? We invite you to discuss in the comment section below.
RWS inovia recently attended the 44th Annual IPO Meeting on September 12th & 13th in New York, NY. We had the pleasure of sitting in on a session with Benoît Battistelli, President of the European Patent Organization. In his remarks, Battistelli reinforced the EPO’s commitment to quality and efficiency in all patent related work moving forward.
The EPO was established in 1973 and covers 42 countries with an annual budget of $2.4 billion, which is self financed as an independent organization. The European Patent Organization is the 2nd largest intergovernmental institution in Europe and employs around 7,000 people.
Battistelli discussed Europe as an attractive and lucrative market for innovation, with a growth of 4.8% European patent applications last year alone. High quality European patents are drivers of innovation and secure the competitiveness of the European economy. 27% of patent applications the EPO received originated from the US and accounted for 16.4% of overall growth last year. Other countries driving growth include China, accountable for 22.2% of growth.