Catching up on EPO's Proposals and Changes

Posted byjames on March 7, 2013

(Guest post by Betty Wu)

In the last couple weeks, the European Patent Office (EPO) has announced several proposals in relation to patent filing and prosecution with the aim to make its system more accessible and efficient.

One of the proposals aims to increase divisional patent application filings. Having reviewed the statistics of divisional filings upon introduction of Rule 36 EPC, the EPO has taken a proactive step by providing open consultation on its EPO website, inviting user feedbacks on the application of Rule 36 and their desired amendments (if any), in hope to cure the low figures of subsequent divisional filings (i.e. not the first divisional filing).

EPO users and legal professional should utilize this opportunity and provide a piece of their mind on the current divisional filings under Rule 36 EPC. The open consultation can be found online at Be sure to have it completed and submitted by April 5, 2013.

Another notable (and possible) change to the EPO is the signing of the signatory states to EPC for the introduction of a Unified Patent Court Agreement. Currently, patent enforcements and revocation procedures are conducted through designated national courts. The current set-up means that patent prosecution is costly and time-consuming and moreover, created a forum-shopping practice on the users’ part to choose a designated court that is less expensive, faster and more probable to produce a favorable result.

The Unified Patent Court Agreement proposes to combat problems created by the existing system by replacing these designated national courts with a Unified Patent Court (UPC), which will be a new forum for the prosecution of EPO patent litigations. The proposed UPC will include a Court of First Instance and a Court of Appeal and a Registry. The proposed Court of First Instance will have three divisions, located in Paris, London and Munich, while the Court of Appeal will be based in Luxembourg.

It should also be noted that included in the Unified Patent Court Agreement is the proposal to introduce Unitary Patent. The unitary patent will not erase the existing EPC patent application regime, in fact, it will be an addition to the existing system, to which a patent application will only be processed as an unitary patent upon request. The unitary patent, would have the effect of reducing translation fees as application translation requirements under this route would be more flexible.

The Unified Patent Court Agreement was signed on February 19, 2013 and is currently awaiting ratification by at least 13 of the 24 signed-states, and would need to include France, Germany and UK to enter into effect; whereas Unitary Patents may be requested starting January 1, 2014 or the date of entry into effect of the Unified Patent Court Agreement.

It is to be hoped that this Agreement will be ratified as reduced application cost and easier litigation should be a significant savings for Canadian business seeking to obtain patent protection in Europe. Or as the EPO president, Benoit Battistelli, said, “The agreement …is a good decision for Europe, as it will reduce the cost of patenting by simplifying the European patent system [and enforcement], too, will become consistent throughout the EU”.


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