What is the European Unitary Patent? European Unitary Patent Review

Establish

• December 2010 - The European Council reached a consensus that the Community patent could not be implemented throughout the EU within a reasonable period of time

• December 2010/January 2011 - 25 Member States wish to initiate a "strengthening cooperation" mechanism in the field of patents and send their request to the European Commission

• December 2010 - The European Commission submitted a proposal to request the European Council to authorize the launch of a "strengthening cooperation" mechanism in the field of patents

• March 2011 - EU Council authorizes the launch of the "Enhanced Cooperation" mechanism

• April 2011 - The European Commission submitted two draft regulations, namely - a Regulation establishing a single patent protection regulation pursuant to Article 118(1) of the Treaty on the Functioning of the European Union (TFEU); and a Regulation on language arrangements pursuant to Article 118(2) of the Treaty on the Functioning of the European Union (TFEU).

• June 2011 - The EU Council agrees on the general approach to the two draft regulations

• December 2011 - The European Parliament's Legal Affairs Committee passed the two regulations at first reading

• December 10, 2012 - The Council of the European Union approved the two regulations and the Agreement on a Unified Patent Court (the "Patent Package").

• 11 December 2012 - European Parliament votes on package of patent regulations

• February 19, 2013 - 24 EU member states formally signed the European Single Patent Project. Italy signed but said it would not adopt the single patent, while Spain did not sign. Both countries believed that the new patent system did not give due recognition to their languages; Bulgaria did not sign because some domestic procedures had not been resolved; Poland believed that the single patent had a potential negative impact on its economy and therefore refused to sign, but it did not rule out the possibility of joining in the future. Michel Barnier, the EU Internal Market Commissioner, said that the single patent system will reduce the cost of patent registration by 80%, and its establishment is an extremely important step in the process of European integration and will greatly enhance competitiveness.

• January 1, 2014 - The new European Unitary Patent scheme will come into effect on January 1, 2014.

Application Process

Submit a European patent application → Formal examination → European search report → Publication of application → Substantive examination → Approval procedure → Effectiveness and annual fees → Opposition → Appeal.

Formalities Examination

The formal examination consists of checking whether all necessary information and documents have been submitted, which determines the filing date of the application. If the claims are not filled in, they must be completed within 2 months. The time required for the official examination is generally completed within 1 to 3 months. The European patent application is considered complete when all the requirements stipulated in the implementing regulations are met, which is the filing date of the European patent.

European Search Report

The European search report is based on the claims, but also takes into account the description and drawings of the patent application. After filling out and submitting the application, the European search report will generally be issued within 6 to 9 months and sent to the applicant, together with an opinion on whether the invention and application meet the requirements of the European Patent Convention. After the application is published, the public can see the contents of the opinion. According to the new rules (from April 1, 2010), within 6 months after the publication of the search report, corrections must be made to the defects in the search opinion. If the applicant does not provide feedback, the application will be deemed to be withdrawn.

Publication of Application

The European patent application will be published in the language of application within 18 months from the date of filing. Once the European patent application is published, the public can obtain data and information about the approval process from the date of publication through the European Patent Registry, and the European patent application will be granted provisional protection in the countries specified in the application. Within 6 months after the publication of the search report, the applicant must choose whether to conduct a substantive examination and pay the corresponding official fees. The designation fee generated by the designated country must also be paid within the same period.

Substantive Examination

After the examination is proposed, the European Patent Office will examine whether the application and invention meet the requirements of the European Patent Convention based on the search report and the applicant's feedback. There is no clear regulation on the time limit for substantive examination. When receiving the official examination opinion, the applicant has 2 to 4 months to submit feedback. If the applicant does not respond within this period, the application will be deemed to be withdrawn. After the applicant's feedback, the examiner may further: contact the applicant (or its representative) by phone, invite the applicant (or its representative) for an interview, or ask questions orally. If the examination department of the European Patent Office believes that the application meets the requirements of the European Patent Convention, the department will decide to grant a European patent; if it is considered that it does not meet the requirements, it will refuse to grant the patent.

Approval Process

After the examination, the European Patent Office will issue a notice of preparation for granting a European patent. It usually takes about 2-3 years from application to approval. The applicant has 4 months to pay the approval and printing fees and submit the claims in the other 2 official languages ​​to the European Patent Office, after which the European Patent Office will announce the grant decision. Within 3 months after the European patent is approved, the European patent will take effect in the selected countries.

Effective date and annual fees

Once the decision of approval is published, the patent will take effect in the designated member states (within 3 months). The 3-month period is for the purpose of completing the application and translation work at the domestic patent offices of the member states. In addition, official fees in the member states must be paid within 3 months (the fees vary from country to country). European patents are only effective in designated countries, and the validity period of European patents will continue as long as annual fees are paid continuously. Starting from the second year after obtaining the European patent, annual fees must be paid to the European Patent Office each year, and annual fees must also be paid to the intellectual property offices of designated countries (the annual fee amounts vary from country to country). If annual fees are not paid on time, they can be extended for up to 6 months, but an additional fee of 50% must be paid.

objection

Within 9 months after the European patent is published, anyone can file an objection to the European Patent Office. The grounds for filing an objection can only be: the patent cannot be granted, the patent does not clearly and completely disclose the invention, making it impossible for technicians in the field to grasp it, and the coverage of the patent exceeds the content of the application. The objection applies to all designated countries where the European patent is effective. Within 2 months after the objection decision is issued, you can continue to appeal to the committee.

appeal

If any party disagrees with the decision of the European Patent Office, it may, within two months of receipt of the notice (or within four months if the basis or reasons are required), file a lawsuit with the Board of Appeal after paying the appeal fee in accordance with the Implementing Regulations.

Role of the EPO under the European Unitary Patent

In the Unitary Patent Regulation, the participating Member States will authorize the EPO to perform the following duties:

• Accept and examine applications for patent unitary effect;

• Registration of a European unitary patent with unitary effect;

• During the transition period, relevant translations will be made public;

• Establish and maintain a new "Single Patent Protection Registry" - including the management of information on the assignment, transfer, expiration, licensing, limitation or revocation of a single patent;

• Collect a single patent annual fee;

• Allocate part of the annual fees to participating member states;

• Administrative fee reduction mechanism - reduction of translation fees (up to full exemption) for applicants who submit applications in some other official languages ​​of the EU (i.e. languages ​​other than English, French and German).

The new duties are consistent with the unilateral registration duties of the EPO under its internal rules. Decisions of the EPO concerning unitary patent protection can be appealed to the Unified Patent Court.

References

• 1. European patent application process: European Patent Office