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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

The Unified Patent Court will have jurisdiction to hear claims relating to both European patents and upcoming European patents with unitary effect established by the EU Unitary Patent Regulation (1257/2012).

The European Patent Office (EPO) will grant unitary patents in accordance with the European Patent Convention (EPC). The pre-grant procedure and requirements to obtain a unitary patent will be the same as for European patents, but the patent owner will be able to request unitary effect within one month from publication of the granted European patent in the European Patent Bulletin.

The patentability criteria for a unitary patent are set out in the EPC and are the same as for European patents. To be patentable, an invention must be new, involve an inventive step and be susceptible of industrial application and must not be excluded from patentability.

What are the limits on patentability?

Under the EPC, the following are excluded from patentability:

  • discoveries, scientific theories and mathematical methods as such;
  • aesthetic creations as such;
  • schemes, rules and methods for performing mental acts, playing games or doing business;
  • computer programs as such;
  • presentations of information as such;
  • inventions of which the commercial exploitation would be contrary to public policy or morality;
  • plant and animal varieties and any essentially biological processes for their production; and
  • methods for treating humans or animals by surgery or therapy and diagnostic methods practised on human or animals.

To what extent can inventions covering software be patented?

Computer programs as such are expressly excluded from patentability, but claims involving computer programs are not excluded if the claimed subject matter has a technical character.  

To what extent can inventions covering business methods be patented?

Business methods as such are expressly excluded from patentability. However, like computer programs, business methods may be patentable if the claimed subject matter has a technical character.  

To what extent can inventions relating to stem cells be patented?

The use of human embryos for industrial or commercial purposes is excluded from patentability on the basis that their commercial exploitation would be contrary to public policy or morality.

Claims directed to a product which could, on the application’s filing date, be exclusively obtained by a method which necessarily involved the destruction of human embryos from which the product is derived are excluded from patentability, even if said method is not a part of the claim. It is therefore necessary to consider the entire teaching of the application to establish whether products such as stem cell cultures are obtained exclusively by the use, involving the destruction, of a human embryo.

Any embryo-derived human stem cells that are “capable of commencing the process of development of a human being” are excluded from patentability. Conversely, stem cells derived from parthenogenesis may be patentable since existing scientific evidence suggests that they cannot develop into an embryo in the absence of paternal DNA.

Are there restrictions on any other kinds of invention?

Inventions of which the commercial exploitation would be contrary to public policy or morality are excluded from patentability. In addition to the use of human embryos for industrial or commercial purposes, this includes processes for:

  • cloning humans;
  • modifying the germ line genetic identity of humans; and
  • modifying the genetic identity of animals – where it is likely to cause them suffering without any substantial medical benefit to humans or animals – and animals resulting from such processes.

Plant or animal varieties are said to be excluded from patentability under the EPC, although patents may be granted if the technical feasibility of the invention is not confined to a particular plant or animal variety. Recent EPO guidance has indicated that such products will not be patentable when produced by essentially biological processes. 

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

The EPC does not have a general grace period. However, it does exempt the following disclosures from being considered prior art, provided that the relevant patent application is made within six months of such a disclosure:

  • disclosures that were an abuse in relation to the applicant or its legal predecessor (eg, a disclosure made in breach of confidence); and
  • disclosures which occurred at an officially recognised international exhibition.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

The centralised EPO opposition procedure – whereby a European patent can be opposed at the EPO within nine months of its grant – will apply to unitary patents as it does to European patents. To the extent that an application for a European patent results in both a unitary patent and a bundle of European patents (in respect of countries to which the application for unitary effect does not extend), the opposition procedure, if successful for the opposing party, will result in both the unitary patent and the corresponding European patents being revoked.

Where there is an opposition ongoing at the EPO and parallel proceedings in the Unified Patent Court relating to the same patent, a party must inform the court of the pending opposition proceedings. The Unified Patent Court may, of its own motion or at the request of a party, request that the opposition proceedings be accelerated in accordance with the EPO proceedings. Further, the Unified Patent Court may stay its proceedings when a rapid decision is expected from the EPO.  

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

The Unified Patent Court provides another court system in which to challenge patents, but introduces no additional methods for challenging a patent in Europe outside the court system.  

How can patent office decisions be appealed in your jurisdiction?

The introduction of unitary patents and the Unified Patent Court do not affect the procedures for appealing patent office decisions in Europe.  

However, the Unified Patent Court will have jurisdiction to hear actions concerning decisions of the EPO in carrying out administrative tasks relating to unitary patents, such as the administration of requests for unitary patents by patent owners and the upkeep of a unitary patents register. 

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The time that it takes for the EPO to grant a patent can vary greatly. According to its 2016 Annual Report Quality Indicators, the EPO indicates that in 2016 the median time for the examination period was 23.3 months. The time to grant will likely vary depending on the technical field of the patent application in question.

The cost to file and obtain a patent from the EPO (including patent agent fees and required translations) depends on, among other things, the patent’s complexity and the national designations sought. The cost is likely to be in the region of £15,000 to £35,000.

Renewal fees for unitary patents will typically be lower than those for traditional European patents. The unitary patent renewal fee structure has been set to correspond to the renewal fees of maintaining traditional European patent validations in Germany, the United Kingdom, France and the Netherlands. Therefore, the difference in fees between the continued validation of a traditional European patent in the 25 Unified Patent Court contracting member states and a unitary patent will be significant. 

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The Unified Patent Court is the only forum for filing infringement actions regarding unitary patents.

For European patents that are in force in at least one contracting member state of the Unified Patent Court, the transitional provisions in the Unified Patent Court Agreement will apply for at least seven years from the date on which the system comes into effect. Unless an action has already been brought before the Unified Patent Court, or the patent owner has opted the patent out of the Unified Patent Court system, the patent owner will be able to choose to bring infringement actions in either the Unified Patent Court or a national court in Europe. 

The Unified Patent Court provides the potential for obtaining a pan-European finding and relief. However, there will be significant uncertainty as to its operation, at least at the outset.

What scope is there for forum selection?

The first instance of the Unified Patent Court has a complicated structure, consisting of a central division (with branches in Paris, Munich and London handling patents with different technical subject matter, according to their international patent classification) and local and regional divisions. Generally speaking, a patent owner can choose to bring an infringement action in:

  • any local or regional division where the infringement (or threatened infringement) has occurred (or may occur); or
  • the local or regional division where the defendant resides.

If there is no local or regional division in the defendant’s state of residence, or the state where the infringement has occurred (or may occur), the infringement action must be brought in the central division.

Therefore, when infringement occurs in multiple member states, there is likely to be considerable scope for forum selection.   

Standalone revocation actions and actions seeking a declaration of non-infringement must be brought before the central division of the Unified Patent Court.

In addition, during the transitional period, there may be an option to bring infringement or revocation proceedings in respect of European patents (but not unitary patents) either in the Unified Patent Court or the national courts in Europe. This adds a further opportunity for forum selection. 

Pre-trial

What are the stages in the litigation process leading up to a full trial?

There is no requirement for pre-action correspondence in Unified Patent Court proceedings.

The Unified Patent Court procedure is divided into three stages: written, interim and oral. The written procedure consists of the sequential exchange of detailed written pleadings, with evidence being submitted where available, and is likely to last approximately nine months. The interim procedure is run by the judge rapporteur and may include an interim conference, at which various orders may be made, including with regard to further pleadings, documents, experts, experiments, and inspections. The oral hearing will consist of hearing the parties’ oral submissions and witnesses and experts, if ordered during the interim procedure. The oral hearing should be completed within one day, where possible. 

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Although the Unified Patent Court is not yet active, it is expected to attempt to deal with disputes expeditiously and there are strict deadlines for the early exchange of substantive pleadings. It is intended that proceedings before the Unified Patent Court will be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity at first instance to take place within one year, although complex actions may take longer. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Any party will be able to bring an action for the revocation of a unitary or European patent which has not been opted out of the Unified Patent Court system in the central division of the Unified Patent Court.   

Alternatively, during the transitional period, an action for the revocation of a European patent (but not a unitary patent) may be able to be brought in the national courts in Europe.  

At trial

What level of expertise can a patent owner expect from the courts?

Unified Patent Court judges will comprise both legally and technically qualified judges and will need to have proven experience in the field of patent litigation (although this may be obtained by training, if required). Legally qualified judges will possess the qualifications required for appointment to judicial office in a Unified Patent Court contracting member state. Technically qualified judges will have a university degree, proven experience in a field of technology and proven knowledge of civil law and procedure relevant in patent litigation. Therefore, while the practical experience of the judges may vary, particularly depending on their nationality and the level of patent litigation in their national courts, all Unitary Patent Court judges should have a reasonably high level of expertise. 

Are cases decided by one judge, a panel of judges or a jury?

Unless the parties agree that the case may be heard by a single legally qualified judge, all cases at first instance will be heard by a multinational panel of three or more judges. In the central division, the panel will comprise two legally qualified judges and one technically qualified judge. In the regional and local divisions, the panel will comprise three legally qualified judges, although a party may request a technically qualified judge to join the panel.

Appeals will be heard in the Court of Appeal by a multinational panel consisting of three legally qualified and two technically qualified judges.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials will not exist in the Unified Patent Court.

What role can and do expert witnesses play in proceedings?

It is expected that expert witnesses (both party and court appointed) will play an important role in Unified Patent Court proceedings. Written expert reports may be submitted with the parties’ pleadings or may be ordered to be provided during the interim procedure stage. Questioning of experts during the oral procedure stage may be permitted, but will be under the presiding judge’s control. Both the parties and the judges will be able to put questions to the witnesses, but these will be limited to what is necessary. 

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Article 2 of the Protocol on the Interpretation of Article 69 of the European Patent Convention states that “for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”.

The Unified Patent Court must base its decisions on, among other things, the European Patent Convention and national law. Therefore, the general principle of infringement by equivalents will likely apply. National courts have adopted differing approaches to the doctrine of equivalents and it is not yet clear how the doctrine will be applied in the Unified Patent Court.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunction applications can be brought before or after merits proceedings in the Unified Patent Court have commenced. Preliminary injunction applications can be made without notice, although it appears that such ex parte applications will be granted only in exceptional circumstances. In addition, to try to prevent this, protective letters can be filed by defendants which suspect that they might be subject to an application for a preliminary injunction.

Preliminary injunctions are subject to the court’s discretion. The court will weigh up the merits of the case and the parties’ interests and take into account the potential harm for either of the parties resulting from the granting or refusal of the injunction.  

How are issues around infringement and validity treated in your jurisdiction?

The Unified Patent Court Agreement contains complex provisions setting out how proceedings in which both infringement and validity are at issue may be handled. For example, where an action for infringement is brought by a patentee in a local or regional division and the alleged infringer has counterclaimed for revocation, the local or regional division may:

  • proceed with both infringement and revocation actions;
  • refer the counterclaim for revocation to the central division and either suspend or proceed with the action for infringement, which results in the possibility of the actions being bifurcated (ie, decisions of infringement and validity being heard in different venues and possibly at different times); or
  • refer both the infringement and revocation actions to the central division, with the parties’ agreement.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The Unified Patent Court will base its decisions on, among other things, the national law of member states and the European Patent Convention. It is anticipated that the Unified Patent Court will rely heavily on the substantive patent law of its member states and European Patent Office case law. 

Damages and remedies

Can the successful party obtain costs from the losing party?

The general rule is that the successful party may recover its reasonable and proportionate legal costs and other expenses in relation to the proceedings in the Unified Patent Court from the unsuccessful party, up to a ceiling set out in the Rules of Procedure. The ceiling for recoverable costs depends on the value of the proceedings.

What are the typical remedies granted to a successful plaintiff?

For infringement actions, the following remedies are available:

  • permanent injunctions across all contracting member states of the Unified Patent Court (in the case of European patents, this is limited to the countries in which the European patent is in force);
  • corrective measures, such as:
    • a declaration of infringement,
    • the destruction or recall of infringing products; and
    • measures to deprive infringing products of their infringing property;
  • damages; and
  • publication of the decision.

Declaratory relief is also available, such as a declaration of invalidity and declarations of non-infringement. 

How are damages awards calculated? Are punitive damages available?

The level of damages should be appropriate to the harm actually suffered by the patent owner as a result of the infringement, such that the patent owner should, to the extent possible, be placed in the position that it would have been in had no infringement taken place. Punitive damages are not available.

The court can take into account:

  • the patent owner’s lost profits;
  • unfair profits made by the infringer; and
  • other factors, such as moral prejudice caused to the patent owner.

In some circumstances, it may be appropriate to assess the damage on the basis of the amount of royalties which would have been due had the infringer requested authorisation to use the patent in question.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The Unified Patent Court has a discretionary right to grant an injunction against an infringer aimed at prohibiting the continuation of the infringement. It is expected that permanent injunctions will normally be granted against a party that has been held to infringe.  

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The Unified Patent Court will aim to hold the final hearing of a claim at first instance within one year. However, the Rules of Procedure acknowledge that “complex actions may require more time and procedural steps and simple actions less time and fewer procedural steps”. The Rules of Procedure also direct that “decisions on costs and/or damages may take place at the same time or as soon as practicable thereafter”. The length of time between the hearing and the rendering of the judgment will likely depend on a number of factors, such as the complexity of the matter and the particular judges hearing the case.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Although the fees for Unified Patent Court proceedings have been published, the total legal costs of bringing an action in the Unified Patent Court are not yet clear and will likely vary significantly depending on a number of factors, such as:

  • the complexity of the case;
  • the division in which it is heard; and
  • the location of that division.

The fees for commencing an action will be based on a fixed-fee scale and a variable fee that depends upon the value of the proceedings. Defendants will also pay a fee according to a set scale.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

There is an automatic right of appeal against a final decision of the first-instance court by any party which has been unsuccessful, in whole or in part, in its submissions, which must be filed within two months from notification of the first-instance decision. It is not yet known how long such appeals will take. 

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

The Unified Patent Court will encourage and facilitate the resolution of disputes outside the courts. The Unified Patent Court Agreement calls for the establishment of a patent mediation and arbitration centre, with seats in Lisbon, Portugal and Ljubljana, Slovenia. If an interim hearing is held, the judge acting as the rapporteur should explore with the parties the possibility for a settlement, including through mediation or arbitration.