Report from the Workshop on the Technical Implementation of the Unitary Patent

Y. Biron (BE), OCC Associate Member

Date: 20 May 2016 08:45 h to 13:00 h European Patent Office ISAR Building Room 102 Bob-Van-Benthem Platz 1 80298 Munich
Participants: EPC Member States National Patent Offices & Observers

Welcome and opening remarks

Alberto Casado (Vice-President, DG 2)

National patent offices are interested in understanding the technical implementation of the Unitary Patent e.g. payments following the agreed repartition of renewal fees. The EPO decided to organize a dedicated workshop to answer all current concerns. The objective is that the National Patent Offices are also ready by the time the package is launched.

State of play of the implementation work Legal framework

Legal framework
Michael Fröhlich (Director European and International Legal Affairs, DG 5)

Michael reminds the audience about the Unitary Patent associated rules and its co-existence with classic European patent validations. See slides.

Nine states have deposited their instrument for the UPC. Launch expected by the UPC preparatory committee in the first half of 2017 with well over 13 states parties. Bulgaria should deposit their instrument very shortly. Lithuania and Italy should be next.

BusinessEurope’s representative comments that a top-up search at the end of the European patent grant proceedings would help to identify any possibly existing national prior art, which are critical considering their impact on future Unitary Patents.

Technical implementation
Dominique Furst-Fontaine (Project Manager Technical Implementation Unitary Patent, DG 2)

All EPO systems are currently being upgraded to manage the different impacts of the implementation of the unitary patent. Compensation pay-out is a new approach to the EPO. More than 65 forms have been deployed. Interfaces are planned with the UPC and National Offices.

Online Filing System and Online Fee Payments System
Dirk van Haken (Head of IT Architecture and Solution Design, DG 2)

1. EPO Online Filing System

New feature: the system will retrieve from OPS the title of the invention to check that the patent number is correct. The application number is then required and the date of the mention of grant recommended.

Request - Three tabs: Unitary effect, Place of business at filing, Compensation (entity profile or language-related).

Names – this section allows to add proprietors.

Documents – Translations may be submitted in this section. Other documents such as a certificate of translation or translation cover letter may be associated to translations.

Fee Payment – Different mode of payment are offered. From deposit account for instance: indicate PEO account number and account holder name. The deposit account may be used for compensation or reimbursement. The list of fees to be paid

Annotations – Any comment made by made for the EPO formality Officer to review upon receipt.

Once all parameters have been entered, pressing play generates the form request. If the content is fine, the application may be signed e.g. via Smart Card.

The package is then added to the ready-to-send list. The user may then send the request to the EPO. An acknowledgement of receipt will be immediately available.

If additional documents must be filed at a later stage, EPO Form UP7038 should be used (vs. EP1038 for subsequently filed documents with classic European patents). Same process as above. Consultation is ongoing with the user community. A plugin should be installed.

2. Online Fee Payment System (through My Epoline)

A new procedure will be added on top of EP and PCT linked to UP to pay for unitary patent protection. If no unitary patent effect has been requested, it will display such information.

3. Web-Form Filing

After login, UP7000 to request unitary effect and UP7038 for subsequently filed documents will be available to deal with UP-related filings. The forms and any type of documents may be uploaded in the system. The system then provides an overview on the request. The documents can then be checked and sent. A detailed AR should either be requested (UP7000) or downloaded (UP7038).

BusinessEurope question on multiple proprietors – when multiple proprietors request such unitary effect, they will have to act through a common representative.

BusinessEurope question on representation – No change vs. classical European patents. An employee of the patent owner could request the unitary effect just as an employee can represent its employer in European grant proceedings.

EPI question on different representatives between Grant procedure and Request for Unitary Effect – EPO Form 1003 & 1004 forms are currently being revised to allow for extended representation post-grant proceedings including for the Unitary Patent related tasks. Specific authorisations would always be accepted just as a new representative may be appointed for opposition proceedings only.

Republic of Eire comments on the interaction between the different systems presented – The online filing system allows to submit online forms mostly prepared offline.

Register for unitary patent protection
Ignacio Muñoz Ozores (Administrator General Publications, DG 5)
Annie Decroix (Lawyer, DG 5)

Presented a demo of the extended European patent register. The register will be divided into two chapters: a first one for the European patent; a second one for the unitary patent (About this file, Event history, All documents).

The list of participating member states at the date of registration will be listed (in the “About this file” section). The UP chapter will be greyed-out if no request has been filed or if the request has been filed but the mention of the grant has not yet been published.

All UP sections will only reflect UP related events and documents.
New search functionalities will be implemented. The date mentioned for the unitary effect request will be the date of registration of Unitary Patent Protection.
The federated register will include a line for unitary effect.

Swedish comments on how will users be able to see registrations such as pledges or compulsory licenses or SPCs – These are planned.

UK comments on whether the national offices will have to communicate to the EPO about national decisions.
EPI comment on translation: no data will be available on the translation at all. The translation will only be available in the file inspection section (All documents). No information on translation language for example.

France comment on Unitary Patent kind code – Such kind code could be very useful for patent database users. This topic is currently being discussed as it strongly impacts EPO systems. The EPO is looking into different ways to solve this issue. The UK is also interested in such feature.

SAP - Public Sector Collection Distribution module (PSCD)
Richard Grabmeir (Application Manager, DG 2)
Thomas Morandell (IT Expert Finance, DG 2).

Richard presents the distribution rules and how they will be implemented into the EPO systems (the EPO uses SAP for accounting).

Transfer of electronic bibliographic data (EBD) – Feedback and exchange
Eloy Rodriguez Barrio (IT Expert, Service Creation DG 2)

Eloy goes through the new XML parameters, as they will be shared with the national offices. All XML technical details will be described in a dedicated EBD document (available from EPO EBD website, including examples). Specific XML tags allow to identify the status of cases.

UK question on the timing between updates on the EPO and XML files – All data is updated weekly on Thursday nights. Available the next day from the EBD restricted area.

Closing remarks

Michael Fröhlich (Director European and International Legal Affairs, DG 5)

The EPO thanks the audience for their valuable feedback and invites the community to test the demo interface.