Good news for NZ innovative exporters on this new patent package and what's involved
In December 2012, the European Parliament agreed upon the provisions for a unitary European Union patent1. When it comes into force in early 2014, existing alongside the current European Patent Convention (EPC) system, patent applicants will have the ability to obtain a single unitary patent valid in all EU member states excluding Spain and Italy.
In short: what do you need to know?
- The current European patent application2 process will not change, but European patent owners will be able to enforce their European patent in 25 EU member states without needing to validate the patent in each country.
- Translation costs will be significantly reduced.
- Single renewal and maintenances fees will be charged for unitary patents.
- Individual applications must be completed for any non-participating EPC states, with their own subsequent renewal, maintenance, and translation costs.
- Enforcement of and challenges to a unitary patent will apply equally in every EU member state via a Unified Patent Court (UPC). While this simplifies such procedures, an unfavourable ruling takes effect throughout Europe, so a unitary patent may be a riskier proposition.
Patent applicants will need to balance the cost benefits of the unitary patent with the risks when deciding how to protect their inventions in Europe come 2014.
Existing European Patent Convention Patents
Currently, patent protection in Europe must be secured by filing a single European patent application with the European Patent Office (EPO), followed by a centralised examination3 process. If granted, the European patent must be "validated" in whichever countries the patent needs to be enforceable in. For many countries, the validation process requires translation of the specification4 into their relevant languages. The cost of multiple translations can be very high, especially for individuals and smaller businesses, and has been cited as a barrier to innovation.
Most proceedings to enforce or challenge a European patent currently need to be resolved individually in each country. These proceedings each come with their own costs, leading to a high price if patent protection covers all of Europe.
Centralising all proceedings through the life of a patent within the European Union could significantly decrease the costs to applicants and owners. The unitary patent is an attempt at this centralisation.
New European Union Patent System
In early 2014, the "EU patent package" is planned to become available for innovators seeking patent protection within 25 of the 27 EU member states. This package includes a unitary patent, a language regime, and a unified patent court.
After grant using the existing European application process, all administration and proceedings for the lifetime of the unitary patent will be administrated centrally by the EPO, resulting in protection in all 25 signatory states. It is therefore a single patent, with equal scope and validity5 in each country.
EU patent applications can be submitted in English, but the
applicant must also provide a translation in any official language
of the EU.
By 2015 the EPO plans to offer free online machine translations of all EU patents and published6 applications in every language of the 38 EPC Member States. It will be only during proceedings such as infringement7, opposition8, and revocation9 that human translations of a patent specification may be required.
Unified Patent Court
A Unified Patent Court (UPC) will be formed for all proceedings dealing with enforcement of, and challenges to, European patent rights. The UPC will deal with both the new unitary patents and existing European patents within the 25 signatory EU states.
This change will drastically simplify and reduce the costs of enforcing or challenging patent rights in Europe. Previously, a patent would need to be enforced individually in each country. A centralised system will be welcome news to many parties. One potential downside is that, whereas previously an unfavourable ruling in one country would not necessarily be repeated in another country, under the new system the same ruling will take effect throughout Europe.
While infringement and revocation action for traditional European patent bundles will be under the jurisdiction of the UPC for EU countries, patent owners may have the opportunity to opt out for a transitional period of at least 5 years, and leave the action in the hands of individual national courts.
In Summary - Implications for New Zealand Innovators
The unitary European patent promises significant simplification and cost reductions to European patent applicants, including New Zealanders.
The cost reductions result from central processing of examination, enforcement and challenge procedures, as well as the need to pay one set of renewals fees and reduced translation requirements.
While not all European countries will initially be participating
in the system, those that are represent the majority of the
European market for most New Zealand patent applicants.
With the EU as one of New Zealand's major trading partners, and therefore an important region for patent protection, these changes are good news for New Zealand innovators who can find the high costs of European patent protection prohibitive.
1A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.
2In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.
3The process by which the receiving office (in New Zealand this is the Intellectual Property Office of New Zealand or IPONZ) determines whether the subject matter of a patent application discloses a valid invention and is patentable. Under current New Zealand law the examiner will ensure that the subject matter meets the definition of "invention" and is novel. Under legislation proposed to be introduced in late 2010, examination will determine whether the subject matter is novel, involves an inventive step, is useful and is not excluded subject matter.
4The document that accompanies a patent application. It defines the scope of the invention in the claims and provides a detailed description of the nature, use and purpose of the invention. A specification may be provisional or complete and there are different rules applying to each.
5A patent is valid if it is legally enforceable. This means that it must fulfil the criteria of patentability and not be able to be invalidated by a patent revocation proceeding. It is possible that a granted patent may not be valid, or at least its validity could be questionable. Ultimately, only the Courts can judge the validity of a granted patent.
6At some point a patent application is published, meaning its contents are available for anyone to read. In New Zealand publication occurs when a patent application is accepted. However, in most countries publication occurs 18 months after the application is filed.
7Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. In New Zealand, the Deed of Letters Patent confers on the patentee a monopoly to make, use, vend or exercise the invention in New Zealand. Performing any of these acts without the permission of the patentee will amount to an infringement if the patent is current and in force. Permission will typically be granted in the form of a license. Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit he/she/it made by virtue of the infringement, and legal costs.
8In New Zealand, once a patent
application has been accepted, it will be
published in the Intellectual Property Office
Journal. There is then a three month period where the
application may be objected to (or opposed), by a third party. If
no opposition is made the patent application will proceed to
Any party that has an interest in the subject matter of the patent can oppose acceptance. The grounds that can be used to oppose a patent application include lack of novelty, lack of inventive step and insufficient disclosure of the invention.
Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor.
9A procedure in which the validity of a granted patent is contested. Any party that has an interest in the subject matter of the patent can apply to revoke (annul) the patent. Revocation can be applied for at IPONZ or the High Court, depending on the circumstances. A revocation proceeding involves the submission of arguments and supporting evidence from both the patentee and the party seeking revocation and will usually be resolved in a hearing. The grounds that can be used to revoke a granted patent include lack of novelty, lack of inventive step and insufficient disclosure of the invention. The procedure for challenging a patent application is known as an opposition.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.