EPO s Validation Agreements

Transcription

1 EPO s Validation Agreements Striking the right balance between cost and quality in the foreign filing process Link: Martin Chatel Product & Quality Manager Dennemeyer and Associates S.A. Disclaimer: the content and views expressed in this presentation are those of the author and do not necessarily reflect the official position of Dennemeyer.

2 Patents State of affairs: difficult to obtain the highest level of protection at the lowest cost the expected legal certainty and predictability on time an efficient filing system tailored to innovation cycles 2 Challenges: Overlapping levels of protection Inefficiencies in the workflows Timeliness: pendency vs. fast track Quality (e.g. translation, agents) The outsourcing dilemma

3 Patents FOCUS Validation on-request Agreements Trends in Morocco: state of play 3 Gaps: Lack of protection enforcement in third countries Counterfeit goods entering the EU Single Market Dissuasion in terms of investments and trade Lack of protection against rogue patenting Moving towards a worldwide patent?

4 Cost saving through search fee optimisation Luxembourg model Source: A safe and effective means to reduce costs for obtaining patent rights in Europe No substantive examination (patent certificate within 18 months). Search report and Written Opinion prepared by the EPO through a Luxembourgish application. The EPO partly or fully refunds its search fees if in a subsequent European Patent Application or PCT application the priority of an earlier LU patent application with this Search Report available is claimed. LU application Filing fee: 20 EUR Official search fee: 250 EUR PCT (RO=EPO) Search fee: 1875 EUR Refund : Complete (100%): 1875 EUR Claims in unchanged/restricted form; otherwise partial refund: 25% EP DIRECT Search fee: 1300 EUR Refund : Partial (84%): 1092 EUR Claims in unchanged/restricted form; otherwise only partial refund: 21% 4

5 Patents Validation Agreements A game changer? Moving closer to a worldwide patent? 5

6 In a nutshell Semantic confusion validation vs. on request "Thinking outside the confines of the continental map" Non-EPC countries (since 2010) Same rationale as for extension countries No accession perspective under Art. 166 EPC Signature date Entry date Status Granted European patents Regional phase entry (Euro-PCT) Direct European Patent Application Not applicable to Unitary patents Morocco 17-Dec Mar-15 in force Moldova 16-Oct Nov-15 in force Tunisia 03-Jul Dec-17 signed Cambodia 23-Jan-17 - signed Lao PDR - - negotiation Brunei - - negotiation Angola - - negotiation 6

7 Objectives Strengthened national patent systems Capacity building IP awareness Number of examiners Reduced duplication Prevalence of 2nd filings (foreign) Significant % targeting the EPO Search and examination work Focus on 1st filings (nationals) Preserving national sovereignty Total patent applications (direct and PCT national phase entries) Resident and non-resident count by filing office Resident Non-Resident Resident Non-Resident Resident Non-Resident Resident Non-Resident Cambodia Morocco Moldova Tunisia Source: WIPO statistics database Same legal effect as national patents National Patent Offices retain exclusive competence for registering the granted European patents National Courts retain exclusive competence for deciding in validity and infringement procedures 7

8 Simplified filing procedure Eligible European patents? IDF (PCT application) Filing date (European patent application) Morocco Moldova Tunisia 1-Mar-15 1-Nov-15 1-Dec-17 Designation Requested by the applicant Validation fee to be paid at the EPO at the latest 6 months after publication of the search report 2-month extension (50% surcharge) Centralised grant process Pre grant: Search and Examination Post-grant: Opposition Appeal A single examination procedure 8

9 Reduced costs Prosecution Costs incurred up to the grant (e.g. filing, search, examination, grant, claims translation in response to Communication under Rule 71(3), renewal fees beginning of the third year) remain unchanged. PCT: reduced search if EPO acted as ISA and IPEA Translation Morocco: claims in French Moldova: full text in Romanian Tunisia: full text in French, English or Arabic Cambodia: claims in English and Khmer Filing / Prosecution at national level Lower cumulative official fees (from filing until grant) Lower cumulative service fees (prosecution) Extra fees for national publication/registration fees 9

10 Delays or acceleration (Euro-PCT) Delaying costs and filing decision Possibility to extend filing deadline: applicants entering the regional phase of a PCT application before the EPO would be able to partly extend the filing deadline by 1 month and better plan their budgets. To date, 3 validation countries or potential countries apply the 30-month time limit for the national phase entries (Lao PDR, Tunisia and Cambodia). Possibility to defer decision to validate until grant (only cost = validation fees) Gain time to better plan one s budget and evaluate the potential of commercial success! Shorten time to grant (up to 24 months) EURO-PCT (EPO = ISA/IPEA + SISA) EPO in 2016 : ISR + 2/3 of IPRPs Early entry* 12 months Waive right to certain communications No further search report (within 6 months) - Interesting for PCT applications filed in EN/FR Positive IPRP (EPO as ISA): Accelerated grant at EPO Accelerated proceedings under PPH No Supplementary European Search (Art. 153(7)) - Waive right to receive communication under R. 70(2)** Waive right to receive communication under R. 161/162*** 6 months 6 months Reduce the set of claims to 15 claims *Provided the PCT application is published and ISR is available (earliest at 19 months) ** Right to be asked for further processing. Waiver applies where EPO did not act as ISA *** Right to be asked to amend the claims. Mandatory reply to negative ISA/IPER/SISA 10

11 Patents MOROCCO Morocco: a secondary market? Current trends Validation framework 11

12 Ease of doing business Fertile ground for industrial rivalry Open economy (free trade agreements) Outlook Relaxed restrictions on foreign capital investments World Bank Doing Business rank 68 out of 189 Strong manufacturing and agriculture exports Leading manufacturer Automotive / Aeronautics Low cost labour market (offshore of production) Key producer of phosphate 70+% world rock reserves Strategic location (distribution & exports) Robust Free trade / Association agreements (incl. USA and EU) Evolving patent legal framework : OMPIC established 2004: law entered into force 2006: Patent Term Extension 2014: amendments Examination (search + preliminary opinion) Amendments to the claims Compulsory licence for non-exploitation 2016: PPH with Spain (benefit for ES applicants) 2017: Cloud Patent Examination (CEPS) with SIPO Indicators Global Innovation Index nd (3rd in African continent) PCT applications/bn PPP$ GDP 56 Search Reports & Opinions (18 Examiners)

13 The Automotive Cluster Outlook 1st exports generating sector (25% in 2016) 4th market in Africa (after ZA, EG and DZ) Since Renault (Dacia)/Nissan: 38% market share 150 automotive-related manufacturers Moroccan 2020 Strategy Industrial Acceleration Plan Objective: scaling up value chains and R&D units 100 billion MAD turnover (exports) Manufacturing 800,000 vehicles 5 Ecosystems: Automotive wiring Interior and seats Metal pressing Automotive batteries Power-train 13

14 A new impetus to innovation and R&D? 2019 (Africa hub for PSA Peugeot) 557M investment (in Kénitra) Initial target: 90,000 vehicles per year Key pillar of growth (after Europe and China) OpenLab with 5 Moroccan Universities OpenLab Sustainable Mobility for Africa" Partnership with Moroccan patent applicants (2016): International University of Rabat (40) University Mohamed V (53) Focus: Electric cars Renewable energies (solar power) Automotive logistics Source: Vectors of growth and innovation Aeronautics and Automotive sectors Clean Energy and sustainable technologies Production optimization R&D optimization? Prevailing Patent Classification (IPC): Chemistry & Metallurgy Reducing labour costs Using old technologies Reducing R&D costs Partnership with key local universities Human necessities Efficiency gains (expertise) Know-how & state-of-the-art technologies Performing operations, Transporting 14

15 EPO/INPI applicants (automotive) Top EPO applicants in 2016 Automotive sector 17 TOYOTA JP 29 VALEO FR 36 CONTINENTAL DE 38 MITSUBISHI JP 64 TATA GROUP IN 68 RENAULT FR 70 BMW AG DE 79 NISSAN JP 80 MICHELIN FR 82 VOLKSWAGEN DE 83 HONDA MOTOR JP 86 SUMITOMO JP Top French EPO applicants in VALEO 9 PSA PEUGEOT 10 RENAULT ADDITIVE MANUFACTURING CONNECTIVITY Top French INPI applicants in VALEO 2 PSA PEUGEOT 5 RENAULT DIVERSE MOBILITY Disruptive technologydriven trends SUSTAINABILITY AUTONOMOUS DRIVING 15

16 Patent filing trends with OMPIC Statistics Patent applications in Morocco 1240 applications (1003 foreign) in % increase compared to % through the validation mechanism 48% through the PCT system (94% in 2015) Assumption The validation agreement may have contributed in increasing the number of filings without affecting the trends in terms of PCT national phase entries. The validation system could contribute to reduce the national office examination workload proportionally to the number of 2nd filings from foreign applicants. Total Non-residents Residents Source: OMPIC Barometer (2017) /2016 Moroccan applicants (national) 72-47% Foreign applicants (PCT/priority) % Foreign applicants (validations) % 16

17 Validation trends targeting OMPIC Attractiveness 2% of filings (foreign origin) in % of filings (foreign origin) in 2016 Sharp increase in first half of 2017 Country of origin: US, FR, CH, DE Available figures Validation state requested by the applicant 75% of validation fee transferred to OMPIC Request published by OMPIC upon notification not before 18 months from the filing/priority date Assumption Source: BAROMÈTRE DE L'OMPIC ( 17 The figure is likely to reflect the number of effectively paid validation fees with the EPO and suggests a non-neglectable growing intention or potential interest to protect in Morocco. Precautionary measure?

18 Phone: Website: Martin Chatel Product & Quality Manager Dennemeyer and Associates S.A.