Preparing for the Unified/Unitary Patent

Subject to any rebellion in Germany it now appears that the Community Patent will emerge from its enormously long gestation period in 2018. It won't be called a Community Patent it will be a "European Patent with Unitary Effect" mostly now called a  Unitary Patent (UP). There is Unitary Patent Package of legislation which seems to be where UPP comes from. The Package includes the arrangements for the Unified Patent Court (UPC). Not even the name is consistent so what can we expect of our attitudes to it.

I have just registered for the CIPA webinars which promise to help us get practical. Book soon the first is on 27 April 2017.  These webinars are free to members as it is considered desirable/essential that everyone who claims to be a patent attorney should be fully up to speed.

AIPPI also have en event on 31 May 2017 and you can book here. There should be a webinar for that too.

The main immediate concerns are

• Choosing between an UP or a conventional EPO bundle when grant decisions are imminent after the package takes effect, and
• Opt out of the UPC jurisdiction for existing European Patents 

The first concerns me most and I have been pondering the factors we need to put into the mix.
Is your client is exploiting the patent? are there licences? what are the probabilities of a dispute arising? what are the probabilities of an opposition? will your client want to maintain long term? does it  envisage significant growth or being bought out?

For what I would call the ordinary SME using its own patents, only filing for true innovation, and having a fairly parsimonious attitude to renewal fees the teenage UP would probably be an unlikely survivor but it is an easy choice in the early years. The fee scale was established in 2015 so these figures are probably going to increase before you pay them.

The other big issue for UK clients is Brexit and whether the European market is available for new innovations is accessible. Its also possible the unitary region wont include the UK after Brexit  but UK owners of UP will still be able to own them.

My current thinking is that the UP is good for optimistic entrepreneurs who see a growth future, but for the more established business who knows its market probably not.

To keep up to date follow BristowsUPC and for the progress of the court see the official Unified Patent Court site. You could also stroll past the court building in Aldgate and dream of appearing there

Why you should withdraw your European Patent Application

Patent applicants and their agents should very seriously consider their portfolios of pending European patent applications. Why?

• You will get the whole of the examination fee back if examination has not started. This deal was improved on 1 July 2016 and is part of the EPO drive for greater efficiency as described here. This is set out in Art 11 of the Fees Rules if you don't believe me.
•  You will get the whole search fee back if there is no supplementary search. Art 9 of the Fees Rules
• The prospect of the Unitary Patent (UP) is fading after the #Brexit vote by the United Kingdom is receding fast. The continental Europeans would like the UK to ratify the Agreement fast so that it can become effective. However to do so before negotiations are complete would potentially put UK businesses who hold patents at a disadvantage when they were being enforced. Its possible that as part of the negotiations some new Treaty might be arranged that allowed the UK and possibly other significant non EU countries that are part of the EPO system to participate. Do read the opinion from Counsel which was sought by IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association rather than the spin that certain parties have put on it. Without the Unitary Patent the less rich patent holder tends to proceed on grant only with a few London Agreement territories. A rapidly granted UP held out tantalisingly the prospect of maintaining patent protection in 25 territories for a reasonable period until the renewal fees climb massively after year 10 to encourage lapse of any patents that are unexploited by that age. 

If you don't want to withdraw patent applications on which hefty renewal fees are being paid for nothing then you should consider making a PACE request when paying the next fee. You need the form 1005 and since I just spent an age looking for it, I have written this blog to hold the link to its location. I am sorry if they have since moved it.

Of course if you move the application along you will need to be able to respond to the examination report and pay the grant fees. It is worth giving applicants an idea of what that might cost having looked at the state of the claims in the application as it stands.

As  a further incentive to tactical withdrawal sometimes the EPO is going  to give you advance notice that the examination is about to start. A sensible move because it must frustrate examiners that cases are abandoned when they have done work, which could have been avoided.

Are we UPP to speed on on Unified Patent Strategy

Patent applications filed at the EPO today could emerge on grant as Unitary Patents or European

High Tech Lemon Squeezing

Patents of Unitary Effect - abbreviated to UPP (which really stands for Unitary Patent Protection). So far most of the news on this exciting topic has concentrated on the preparations for the Unified Patent Court (UPC) and its procedure. UPC even has its own website and its news machine is very exciting and efficient. The date it all goes live could be in 2016.

My latest copy of the CIPA Journal -available to members using Safari or Internet Explorer here contains at page 59 an interesting article by Ellie Purnell reporting on the Manchester meeting which  encouraged us all to keep up-to-date. (If you read it you will understand what I mean when I say "I am squeezing her lemons").

We even know what the renewal fees of the UPP will be when one is eventually granted as this was agreed back in June. They are really very interesting. If you could get an UPP granted quickly you could save a bundle on awful EPO renewal fees on pending applications. Not until the 12th year does a UPP cost more to maintain than an application languishing before the EPO. This is a serious wake-up call to patent attorneys: we need to get patents granted or abandoned. I like their thinking.

Now I expect that all the big firms have been brainstorming their strategies for their clients and are able to advise on whether EPO applications or national applications are the right route on each individual case. However, solos might be a little bit less well positioned for brainstorming so I thought I'd look and see what resources were available to help clients and solo strategists.

The EPO has some useful FAQ here but they are not in the business of offering strategic advice.

The companies filing their priority applications now, the UPP is something they need to take into account, especially if they think they might want national patents rather than put all their eggs in one basket at the unitary patent court. Judging by the is the concern amongst big business for opting out their classical European patents and their distress about the possibility of paying €80 for each opted out patent family, we must expect that industrial patent departments are well abreast of the issues, so are they abandoning the EPO in droves?

The real decision time if you are on the EPO route is after grant. At that stage you have to choose whether to go for a UPP (patent with unitary effect) or national patents or a combination. Combination is necessary because the UPP does not cover all EPO states and will never do so since some of them like Switzerland are outside the European Union. Therefore, you may think it's safe to carry on with the standard PCT EPO route, but is it? If the EPO is going to stall applications with an adverse search report, sticking with the EPO could be an expensive option. Maybe long pendencies are quite attractive to an applicant and therefore choosing our now under-resourced national patent offices for examination might be an interesting option for keeping hopeless patent hopes alive and your competitors wondering.

What do you think. Please draw attention to any relevant articles?