Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
London
WC1V 7QH
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Recent News:

Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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UK Government Preparing to Ratify Unified Patent Court Agreement
On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unit...
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EPO Added Subject Matter Test is Relaxed
Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict....
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UK Procedures Assist German Patent Litigation
There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of...
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Practical tips for UK and EU design registrations in view of the UK Trunki decision
In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at...
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UK Patent Box to be Revised

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

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EU Unitary Patent Summary

By a large majority, the EU Parliament on 11 December 2012 voted to approve legislation that enables implementation of the Unitary Patent, a single EU-wide (well almost) patent. The approval was (and still is) hoped to bring to a a conclusion some 40 years of debate, negotiation and compromise. While there are still some obstacles in the way of actual implementation (there are legal challenges by Spain and Italy still be to decided and additionally member states must ratify the legislation), EU politicians have now had their say and have cast their final votes. In all likelihood we will be seeing Unitary Patents by as early as 2014. The legislation also creates the EU Unified Patent Court, to handle infringement and validity issues of both Unitary Patents and existing European Patents, as discussed below.

Getting a Unitary Patent

The Unitary Patent System will be administered by the European Patent Office. Costs pre-grant and examination are expected to be subject to the same as current European patent applications. However, at grant a European Patent can be registered as a “Patent with Unitary Effect” instead of being validated in national member states. The option of a more limited validation programme will remain. It appears that existing European Patent applications that are currently pending but which grant around or after the implementation date of the Unitary Patent System may be able to be registered on grant as Patents with Unitary effect. Therefore we could be seeing Patents with Unitary Effect being granted as soon as 2014. There are many positives, particularly to the SME and its budget:

* Translations will (eventually) be no-more

* Annual maintenance fees will likely be much less than those that would currently be paid if all EPC member states were validated

* Court decisions on patent infringement will be enforceable in all member states without further litigation steps being necessary

* SMEs to potentially benefit from reduced annual maintenance fees

* There will be no obligation to record assignments and other transactions nationally post-grant

EU Unitary patent country coverageThe "member states" covered by a Patent with Unitary Effect are Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom. Note that not all EPC member states are covered. However, Italy, Spain, Switzerland/Liechtenstein, Turkey, Norway, Albania, Croatia, Iceland, Monaco, Former Yugoslav Republic of Macdeonia, Serbia, San Marino, Bosnia and Herzegovina and Montenegro remain available for validation separately.

Unified Patent Court

The Legislation creates a Unified Patent Court which is said should have exclusive jurisdiction in respect of European patents with unitary effect and European patents designating one or more Contracting Member States. The Court will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will be composed of a central division (with its seat in Paris and two sections in London and Munich) and by several local and regional divisions in the Contracting Member States to the Agreement. The Court of Appeal will be located in Luxembourg. Infringement actions should be brought before the local division hosted by a Contracting Member State where the infringement has occurred or may occur, or where the defendant is domiciled or established, or to the regional division in which that Contracting Member State participates. If the Contracting Member State concerned does not host a local division and does not participate in a regional division, the plaintiff shall bring the action before the central division. The parties are free to agree before which division of the Court of First Instance (local, regional or central) an action may be brought. In the event of a counterclaim for revocation, the local or regional division should have the discretion to continue with the infringement proceedings independently of whether it proceeds as well with the counterclaim for revocation or whether it refers the counterclaim to the central division. Revocation actions (that are not filed as counterclaim for infringement) should be brought before the central division. The Court should base its decisions on EU law, the European Patent Convention (EPC) and national law under the EPC. It should also respect provisions of international agreements applicable to patents and binding on all the Contracting Member States and national law of the Contracting Member States in the light of applicable Union law.