DOCSLIB.ORG

Sipim-Dissertation-Final 1

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Sipim-Dissertation-Final 1 The ASEAN Patent System: The Adoption of Regional Patent Office in ASEAN Sipim Wiwatwattana A dissertation submitted in partial fulfillment of the requirements for the degree of Doctor of Philosophy University of Washington 2017 Reading Committee: Toshiko Takenaka, Chair Kyoko Tokuno Robert W. Gomulkiewicz Dongsheng Zang Program Authorized to Offer Degree: School of Law © Copyright 2017 Sipim Wiwatwattana University of Washington Abstract The ASEAN Patent System: The Adoption of Regional Patent Office in ASEAN Sipim Wiwatwattana Chair of the Supervisory Committee: Professor Toshiko Takenaka School of Law With the goal of establishing itself as a single market and competitive economic region, the Association of Southeast Asian Nations (ASEAN) recognizes the patent system as a mechanism to promote a pro-business environment and to attract technological investment to the region. However, despite efforts to improve patent services, the limited institutional capacity and the flaws in patent registration system in ASEAN countries are still important obstacles for development. This study argues that ASEAN should consider adopting another regional model, namely the regional Patent Office, to remove such difficulties and promote the patent registration system in ASEAN. The core of this study, therefore, is the ASEAN regional Patent Office. The aim of this study seeks to examine the concept and potential impacts, both positive and negative, that the establishment of the regional Patent Office has on ASEAN and to determine whether the regional Patent Office can be a mechanism that helps ASEAN remove the flaws and serve ASEAN’ s interests. Based on a qualitative research, the study examines ASEAN regional framework, current situation, and constraints of patent registration system in ASEAN. It then analyzes the policy and legal framework, operation, advantages, and challenges of the regional Patent Office, through experiences of two regional Patent Offices: the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO) in order to determine the applicability of regional Patent Office to ASEAN. The finding of this study suggests that the regional Patent Office would benefit ASEAN in improving its capacities in administering the patent registration and promoting the policy and goal of ASEAN to accelerate technological growth in the region. The study also pinpoints key considerations which ASEAN Member States must take into account and take actions in order to maximize the benefits and overcome the challenges that ASEAN might have in establishing the regional Patent Office. Keywords: ASEAN, patent, patent registration, patent procedure, patent prosecution, patent office, regional patent office, regional patent system, patent cooperation, intellectual property Table of Contents List of Tables…………………………………………………………………………………......iv List of Charts………………………………………………………………………………………v Abbreviations…...………………………………………………………………………………...vi Chapter 1 Introduction………………………………………………………………………….1 1. Background of ASEAN……………………………………………………………………4 2. ASEAN Patent Registration System……………………………………………………...10 3. Objectives of the Study…………………………………………………………………...21 4. Research Questions and Hypothesis……………………………………………………...22 5. Methodology……………………………………………………………………………...22 6. The Scope of the Study…………………………………………………………………...23 7. Significance and Contribution……………………………………………………………24 Chapter 2 The Regional Patent Office………………………………………………………...26 1. Introduction: The Territorial Principle and Patent Procedure Cooperation………………26 2. The Concept and Policy Framework of Regional Patent Office………………………….28 A. The European Patent Office (EPO) ………………………………………………….31 B. The African Regional Intellectual Property Organization (ARIPO)………………...35 3. General Impacts of the Regional Patent Office…………………………………………...41 A. Advantages of the Regional Patent Office………………………………………..…..42 B. Disadvantages of the Regional Patent Office…………………………………………51 Chapter 3 Advantages of the Regional Patent Office for ASEAN…………………….…….57 1. Administrative Aspect…………………………………………………………………….57 A. Pooling Resources..….………………………………………………………………..59 i B. Sharing the Workload and Reducing the Duplication………………………………...64 C. Reducing the Delay and Application Backlog in National Patent Office…………….65 D. Assuring the Patent Quality…………………………………………………………...66 E. Cost Savings…………………………………………………………………………..67 2. Policy and Legal Aspect…………………………………………………………………..70 A. Reducing the Divergence of the Patent System in ASEAN…………………………..70 B. Developing Patent System in ASEAN………………………………………………..75 C. Advancing ASEAN’s Interests….……………………………………………………78 Chapter 4 ASEAN’s Challenges of Establishing the Regional Patent Office……………….91 1. Impacts on ASEAN Member States’ Sovereignty and the ASEAN Way………………...91 2. Impacts on ASEAN’s Diversity and National Interests…………………………………..96 3. Impacts on National Patent Offices of Member States………………………………….103 4. The Limit of Operational Language……………….……………….……………………110 5. High Costs of Operation……………….……………….……………….……………….115 6. The Lack of Skilled Patent Practitioners……………….……………….……………….117 Chapter 5 Balancing ASEAN’s Interests: Considerations in Establishing the ASEAN Regional Patent Office…………...122 1. Re-considering and Minimizing Impacts and Challenges of Establishing the Regional Patent Office in ASEAN ……………….……………….………………....123 1.1 Impacts on ASEAN Member States’ Sovereignty and the ASEAN Way………….123 1.2 Impacts on ASEAN’s Diversity and National Interests…………………………….130 1.3 Impacts on National Patent Offices of Member States……………………………..135 1.4 The Limit of Operational Language………………………………………………..139 1.5 Costs of Operation………………………………………………………………….144 ii 1.6 The Lack of Skilled Patent Practitioners…………………………………………...146 2. Considerations and Recommendations to Maximize Benefits of the Regional Patent Office in ASEAN…………………………………………………..148 2.1 The Organizational Structure and Policy…………………………………………...149 2.2 The Legal Framework………………………………………………………………153 2.3 The Enforcement……………………………………………………………………155 2.4 The Services and Fees………………………………………………………………158 2.5 Location…………………………………………………………………………….161 2.6 Patent Database and Human Resources…………………………………………….163 2.7 Technical Assistance………………………………………………………………..165 2.8 The National Patent Office and the Cooperation with the Regional Patent Office...168 2.9 Public Communication……………………...………………………………………171 Chapter 6 Conclusion…………………………………………………………………………173 Bibliography…………………………………………………………………………………...183 iii List of Tables Table 1…………………………………………………………………………………………...13 Patent applications for inventions filed in China, India, and ASEAN Member States Table 2…………………………………………………………………………………………...14 Patent applications for inventions filed in ASEAN Member States Table 3…………………………………………………………………………………………...55 Fee schedules of the EPO and four national Patent Offices Table 4.…………………………..…………………………..…………………………………..88 National patent applications and European patent validations in certain EPO Member States iv List of Charts Chart 1…………………………………………………………………………………………..35 Total European and Euro/PCT (international phase) applications since 1978 Chart 2…………………………………………………………………………………………..40 Total ARIPO and ARIPO/PCT applications since 1984 Chart 3…………………………………………………………………………………………..46 The number of patent applications filed with certain national Patent Offices of EPO Member States before and after ratifying the EPC v Abbreviations AEC ASEAN Economic Community ARIPO African Regional Intellectual Property Organization ASEAN Association of Southeast Asian Nations ASPEC ASEAN Patent Examination Co-operation AWGIPC ASEAN Working Group on Intellectual Property Cooperation DPMA German Patent and Trade Mark Office EPC European Patent Convention EPO European Patent Office FDI Foreign Direct Investment IP Intellectual Property Office IPRs Intellectual Property Rights ISA International Search Authority PCT Patent Cooperation Treaty PPH Patent Prosecution Highway R&D Research and Development S&E Search and Examination SMEs Small and Medium Enterprises TRIPs Agreement on Trade-Related Aspects of Intellectual Property Rights UNECA United Nations Economic Commission for Africa USSFTA The United States-Singapore Free Trade Agreement WIPO World Intellectual Property Organization vi Acknowledgements I am greatly indebted to many people during researching and writing this dissertation. First and foremost, I would like to thank my supervisor Professor Toshiko Takenaka for her immeasurable guidance and kind support throughout my graduate studies. I extend my sincere appreciation to my reading committee members, Professor Kyoko Tokuno, Professor Robert W. Gomulkiewicz, and Professor Dongsheng Zang for their helpful comments and encouragement during the research. I also would like to thank Professor Michael Townsend, Dr. Melissa Kane, and Professor Hilary Soderland for their kind assistances and administrative support during my study. I express my special thanks to Professor Heinz Goddar and Dr. Stefan Luginbühl who have provided helpful resources and insightful information since I first developed my study; Associate Professor Orabhund Panuspatthna who have kindly given me suggestions and support for doing this study as well as developing my future research; and Mr. Suebsiri Taweepon who always point out interesting issues that are beneficial for my study and help me better understand the patent practice. I am also much obliged to patent offices, patent experts, patent lawyers, and business sectors for
Load more

Recommended publications
  • The IP5 Offices Chapter 2
    IP5 Statistics Report 2015 Chapter 2 - The IP5 Offices Chapter 2 THE IP5 OFFICES As the world sees economic barriers between nations fade away, innovators want their intellectual creations to be protected concurrently in multiple major markets. It is believed that more than 250,000 patent applications for the same inventions are filed each year in two or more of the IP5 Offices, leading to increasing backlogs. To address this issue, the IP5 Offices are working together to try to reduce the amount of duplication of work that takes place between offices for these patent applications. Patents are used to protect inventions, and their counts are recognized as a measure of innovative activity. Fig. 2.1 shows the number of patents in force worldwide at the end of 2014. The data are based on the most recent worldwide patent information available from the WIPO Statistics Database11. At the end of 2014, 90 percent of the 10.0 million patents that were in-force were valid in one of the IP5 Offices jurisdictions. This demonstrates the prominent role that is played by the IP5 Offices. 11 www.wipo.int/ipstats/en/statistics/patents/. Data for patents in force for 2014 are missing for some countries in the WIPO data. Where available, the most recent previous year’s data were substituted for missing 2014 data. 4 IP5 Statistics Report 2015 Chapter 2 - The IP5 Offices The Patent Prosecution Highway (PPH) leverages acceleration procedures available at each office, while enabling participating offices to share available work results. It is a framework in which an application found to be patentable/allowable by the Office of Earlier Examination (an office which has examined a patent application first) will be subject to accelerated examination with simple procedures, upon the request of the applicant, in a participating Office of Later Examination (an office which will then process the corresponding application).
    [Show full text]
  • HØIBERG Patent Guide How to Patent Your Inventions IMPRESSUM
    HØIBERG Patent Guide How to patent your inventions IMPRESSUM HØIBERG Patent Guide 2016 Also available for download at www.hoiberg.com PUBLISHER HØIBERG EDITOR Susanne Westphael Skov, HØIBERG A special thanks to Sensative AB, Thürmer Tools and Windar Photonics A/S for contributing to this guide. DESIGN & PRODUCTION Sebastian Sejer & Co A/S HØIBERG Adelgade 12, 1304 København K Åbogade 25 A, 8200 Aarhus N Mobilvägen 10, 223 62 Lund, Sweden Tel. +45 3332 0337 www.hoiberg.com CONTENTS 0 Introduction . 3 Foreword from HØIBERG by Pernille Winding Gojkovic og Peter Borg Gaarde . 3 1 Why patent? . 5 2 What protection does a patent provide?. .9 Case 1: Sensative “Aligning an IPR strategy with business partnerships” . 10 3 Who is the rightful owner of a patent? . 12 4 Criteria for patentability . 15 5 Can software be patented? . 19 6 Filing – when and where? . 23 7 Patent application drafting and prosecution . 27 Case 2: Windar Photonics – “An example of successful commercialization of university based research” . 32 8 Going public? How and when to to publish . 35 9 International patenting. 39 10 Alternative IP protection . 43 11 Freedom-to-operate . 47 12 IPR strategy and business plan . 53 Case 3: Thümer Tools ”We are 118 years old – but we just got started!” . 56 13 Licensing patents – Collaboration and licensing . 58 14 What is your patent worth? . 61 15 Due diligence . 64 16 Enforcing patent rights . 68 17 Glossary . 70 18 Contributors . 73 1 2 Foreword from HØIBERG We are proud to present The HØIBERG Patent Guide. Intellectual Property Rights in general and patents in particular are becoming increasingly important to any firm engaged in product development.
    [Show full text]
  • The Public Interest and the Construction of Exceptions to Patentee's Rights
    The Public Interest and the Construction of Exceptions to Patentee's Rights - A comparative Study of UK and German law by Marc Dominic Mimler A Thesis Submitted for the Degree of Doctor of Philosophy Queen Mary, University of London 2015 Statement of Originality I, Marc Dominic Mimler, confirm that the research included within this thesis is my own work or that where it has been carried out in collaboration with, or supported by others, that this is duly acknowledged below and my contribution indicated. I attest that I have exercised reasonable care to ensure that the work is original, and does not to the best of my knowledge break any UK law, infringe any third party’s copyright or other Intellectual Property Right, or contain any confidential material. I accept that the College has the right to use plagiarism detection software to check the electronic version of the thesis. I confirm that this thesis has not been previously submitted for the award of a degree by this or any other university. The copyright of this thesis rests with the author and no quotation from it or information derived from it may be published without the prior written consent of the author. Signature: Marc Dominic Mimler Date: 28 May 2015 2 Abstract The thesis analyses the concept of public interest with regards to exceptions to patent rights. It is submitted that patent rights are generally provided for a utilitarian purpose which is to enable technological advance. This goal is meant to be achieved by providing exclusive rights over the patented invention.
    [Show full text]
  • Attachment 1 DECLARATION of JOSEPH STRAUS in Support Re: 61
    Doc. 173 Att. 1 Association For Molecular Pathology et al v. United States Patent and Trademark Office et al Dockets.Justia.com C. V. Joseph Straus (Dr. jur, Dres. jur. h.c.), Professor of Law (Universities of Munich and Ljubljana); Marshall B. Coyne Visiting Professor of International and Comparative Law, George Washington University Law School, Washington D.C.; Honorary Director of the Intellectual Property Institute of the Tongji University, Shanghai, Honorary Professor Tongji University, Shanghai; Honorary Professor Huazhong University for Science and Technology, Wuhan; Honorary Director of the Chinese- German Institute for Intellectual Property, Huazhong University, Wuhan; Honorary Professor, University of Xiamen; Visiting Professor, Graduate Institute of Intellectual Property, Taipei; Visiting Fellow, Hoover Institution, Stanford University. Director Emeritus of the Max Planck Institute for Intellectual Property, Competition and Tax Law, Munich (2001-2009); Former Chairman, Managing Board of the Munich Intellectual Property Law Center (MIPLC) (2003-2009) Born: 1938 in Trieste, Italy, received Law-Diploma 1962 from University of Ljubljana, Slovenia, and 1968 Dr. jur. (SJD) from University in Munich. Habilitation in 1986 at University of Ljubljana. Private practise from 1968 to 1977, since then with the Max Planck Institute. Nominated Full Professor of Intellectual Property Law, University of Ljubljana (1986-). Visiting Professor of Law, Cornell Law School, Ithaca, N.Y. (between 1989 and 1998); Distinguished Visiting Professor of Law, Faculty of Law, Toronto University (Spring 2005). Author or co-author of more than 300 publications in the field of intellectual property law, especially in the field of the protection of biotechnological inventions. Consultant to OECD, WIPO, UNCTAD, UNIDO, EC-Commission, World Bank, Scientific Services of the German Bundestag (Federal Parliament) and the German Government, as well as the European Parliament, the European Patent Organisation, the Swiss Government and the Swiss Federal Institute for Intellectual Property.
    [Show full text]
  • Speech Dr. H. P. Kunz-Hallstein
    JIPLP / GRUR Seminar, 6 March 2013 Welcome address by Dr. H. P. Kunz-Hallstein, GRUR President Ladies and Gentlemen, Welcome to Munich! It is my great pleasure to open this Celebratory Seminar at the venerable German Patent- and Trademark Office. Under the name Kaiserliches Patentamt – Imperial Patent Office – it started on 1 July 1877 in Berlin to receive and examine patent applications and reopened after the war in Munich on 1 October 1949. Here it continues – since 1 January 2009 under the presidency of our host, Mrs Rudloff-Schäffer – to live up to its traditional standards which caused the legendary Josef Kohler to call the Patent Office “Die Hauptkulturstätte dieses großartigen Rechtsgebiets” – “The principal cultural site of this great field of law”. Dear Mrs Rudloff-Schäffer, we are very grateful for your hospitality. Our personal acquaintance goes back to the time when we both were working at today’s Max-Planck Institute for Intellectual Property and Competition Law. The good and trusting relations between our Association and you grew up when you decided to work for the Ministry of Justice in Bonn and later in Berlin where you held important responsibilities in the field of intellectual property law. Thank you also for honouring us with your presence and for addressing us. You share the interest and support to the development of European patent law with your predecessors amongst which, to name but one, the unforgotten Kurt Haertel, who went into history as a father of the European Patent Convention. We are also very honoured to have with us a high representative of the European Patent Office which has become – if I may say so – another “principal cultural site of patent law” in this country and which acts just next door; the EPO that examines and grants with great success since 1 June 1978 the European Patents and which will also issue the future European Patents with unitary effect that we will discuss today.
    [Show full text]
  • Guidelines for Examination in the European Patent Office
    GUIDELINES FOR EXAMINATION IN THE EUROPEAN PATENT OFFICE Published by the European Patent Office Published by the European Patent Office Directorate Patent Law 5.2.1 D-80298 Munich Tel.: (+49-89) 2399-4512 Fax: (+49-89) 2399-4465 Printed by: European Patent Office, Munich Printed in Germany © European Patent Office ISBN 3-89605-074-5 a LIST OF CONTENTS page General Part Contents a 1. Preliminary remarks 1 2. Explanatory notes 1 2.1 Overview 1 2.2 Abbreviations 2 3. General remarks 3 4. Work at the EPO 3 5. Survey of the processing of applications and patents at the EPO 4 6. Contracting States to the EPC 5 7. Extension to states not party to the EPC 5 Part A – Guidelines for Formalities Examination Contents a Chapter I Introduction I-1 Chapter II Filing of applications and examination on filing II-1 Chapter III Examination of formal requirements III-1 – Annex List of Contracting States to the Paris Convention (see III, 6.2) III-20 Chapter IV Special provisions IV-1 Chapter V Communicating the formalities report; amendment of application; correction of errors V-1 Chapter VI Publication of application; request for examination and transmission of the dossier to Examining Division VI-1 Chapter VII Applications under the Patent Cooperation Treaty (PCT) before the EPO acting as a designated or elected Office VII-1 Chapter VIII Languages VIII-1 Chapter IX Common provisions IX-1 Chapter X Drawings X-1 Chapter XI Fees XI-1 Chapter XII Inspection of files; communication of information contained in files; consultation of the Register of European
    [Show full text]
  • IP5 Statistics Report 2015 Edition
    IP5 Statistics Report 2015 Edition IP5 Statistics Report 2015 Edition European Patent Office, Japan Patent Office, State Intellectual Property Office of the People’s Republic of China, Korean Intellectual Property Office, United States Patent and Trademark Office Edited by JPO, December 2016 IP5 Statistics Report 2015 Executive Summary Executive Summary The IP5 SR is an annual compilation of patent statistics for the five largest Intellectual Property Offices- the IP5 Offices - namely EPO, JPO, SIPO, KIPO and USPTO. ・At the end of 2014, 10.0 million patents were in force in the world (+6.2 percent). 90 percent of these patents were valid in one of the IP5 Offices jurisdictions. ・In 2014, 2.3 million patent applications were filed worldwide, either as direct national, direct regional or international phase PCT applications, of which 93 percent originated from the IP5 Blocs. ・In 2015, 2.4 million patent applications were filed at the IP5 Offices (+8 percent). ・In 2014, the proportion of applications filed via the PCT was 9 percent for applications originating from the IP5 Blocs. ・Together the IP5 Offices granted 1,017,375 patents in 2015 (6.5 percent more than 2014). ・In 2015, the main developments at the IP5 Offices were: - IP5: On May 22, 2015, the 8th Meeting of the IP5 Heads of Office was held in Suzhou, China. At the meeting, requests from users were discussed to expand the Patent Prosecution Highway (PPH) program to more offices and improve the operation of the PPH. The meeting decided to discuss PPH initiatives within the IP5 with the aim of improving accessibility for users.
    [Show full text]
  • International Patent Cooperation Union (Pct Union)
    E PCT/A/I/14 ORIGINAL: English WIPO DATE: April 14, 1978 WORLD INTELLECTUAL PROPERTY ORGANIZATION GENEVA INTERNATIONAL PATENT COOPERATION UNION (PCT UNION) ASSEMBLY First Session (1st Extraordinary) Geneva, April 10 to 14, 1978 REPORT Adopted by the Assembly INTRODUCTION 1. The Assembly of the International Patent Cooperation (PCT) Union (hereinafter referred to as “the Assembly”) held its first (extraordinary) session in Geneva from April 10 to 14, 1978. 2. Up to the date of the opening of the session, 18 States (hereinafter referred to as “member States”) had deposited their instruments of ratification of, or accession to, the PCT with the Director General of WIPO. The following 12 member States were represented at the session: Brazil, Cameroon, France, Germany (Federal Republic of), Luxembourg, Madagascar, Senegal, Soviet Union, Sweden, Switzerland, United Kingdom and United States of America. The following six member States were not represented at the session: Central African Empire, Chad, Congo, Gabon, Malawi and Togo. 3. Pursuant to the decision referred to in paragraph 33 below, the following 12 States participated in the session as special observers: Australia, Austria, Canada, Denmark, Finland, Hungary, Ireland, Japan, Netherlands, Norway, Romania and Spain, whereas the following five States were represented by observers: Algeria, German Democratic Republic, Italy, Portugal, and Uruguay. 4. Pursuant to the said decision, two intergovernmental organizations, the European Patent Organisation and the African Intellectual Property
    [Show full text]
  • World Intellectual Property Organization Geneva
    E WIPO SCIT/ATR/PI/1999/EP WORLD INTELLECTUAL PROPERTY ORGANIZATION GENEVA STANDING COMMITTEE ON INFORMATION TECHNOLOGIES ANNUAL TECHNICAL REPORT 1999 ON PATENT INFORMATION ACTIVITIES* submitted by the EUROPEAN PATENT OFFICE An annual series of reports on the patent information activities of members of the Standing Committee on Information Technologies * – The term “patent” covers utility models and SPCs. – Information related to design patent activities reported by industrial property offices issuing design patents is included in the series of documents SCIT/ATR/ID. European Patent Office Technical Report on Patent Information Activities in 1999 European Patent Office 29 May 2000 Technical Report on Patent Information Activities in 1999 Page II Table of Contents I. EVOLUTION OF PATENT ACTIVITIES ........................................................................... 1 II. MATTERS CONCERNING GENERATION, REPRODUCTION, DISTRIBUTION AND USE OF PRIMARY AND SECONDARY SOURCES OF PATENT INFORMATION....... 2 1. Printing and Publication of Patent Documents........................................................... 2 1.1 Patent Applications ............................................................................................ 2 1.2 Granted Patents................................................................................................. 3 2. Main Types of Announcements in the Field of Patent Information ............................ 4 3. Publication Media.......................................................................................................
    [Show full text]
  • The European Patent Office
    INTEllECTUAl PROPERTY 286 CHIMIA 2000, 54, No.5 Chimia 54 (2000) 286-287 © Neue Schweizerische Chemische Gesellschatl ISSN 0009-4293 Safeguarding Europe-Wide Patent Protection: the European Patent Office Ulrich Schatz* Abstract: The European patent system, created in 1977, provides for the co-existence of a national and a centralised procedure for the grant of patents. Central grant authority for European patents is the European Patent Office in Munich, which carries out its task on the basis of the provisions laid down in the European Patent Convention. The establishment of a Europe-wide patent system has led to a significant increase in the demand for patent rights in Europe. Inthe framework of their co-operation, the member states of the European Patent Organisation have also created a unique patent information network for accessing the information contained in patent documents. In view of its impending eastward expansion, the European Patent Organisa- tion is set to undertake a revision of the European patent system to ensure its flexibility in the future. Keywords: esp@cenet . Europe· Innovation· Internet· Patent information' Patents The conclusion of the European Patent borders proves that this Organisation has grounds for revocation by the EPO in an Convention on 5 October 1973 was an changed the landscape of industrial prop- opposition procedure and those by na- important milestone on the road to a uni- erty protection in Europe. The worldwide tional courts in revocation or infringe- fied patent in Europe. In 1997 the Europe- development in the field of patents has, ment procedures. Furthermore, the Con- an Patent Office celebrated its 20th anni- moreover, been significantly influenced vention provides for professional repre- versary, The founding of the European by the European Patent Convention enter- sentation before the EPO, creates the Patent Organisation in 1977 and the open- ing into force.
    [Show full text]
  • The Unitary Patent Package Court Competence and Substantive Law
    FACULTY OF LAW Lund University Jonas Lembke JAEM03 Master Thesis The unitary patent package Court competence and substantive law European Business Law 30 higher education credits 28 May 2014 Supervisor: Prof. Michael Bogdan Terms: unified patent court; unitary patent; private international law; European patent law 1 Contents ABBREVIATIONS 4 ABSTRACT 6 ACKNOWLEDGEMENT 8 1 INTRODUCTION 9 1.1 Definitions 12 1.2 Brief history of the creation of a Community patent 13 1.2.1 Early days 14 1.2.2 The creation of a Community Patent 15 2 POST MILLENNIA DEVELOPMENT 18 2.1 The London agreement 18 2.2 Community patent continued 19 2.3 C-274/11 and C-295/11 - Spain and Italy v Council 20 2.4 C-146-7/13 Spain v Council 22 2.4.1 Judicial review 24 2.4.2 Legal base for UPR 25 2.4.3 Legal base for UPRL and the language regime 27 2.4.4 Discrimination on language and legal certainty 28 2.5 Opinon 1/09 and a European and EU Patent Court 32 2.6 Current state of affairs 34 3 THE CONTENT OF THE UNITARY PATENT 36 3.1 Regulation (EU) 1257/2012 36 3.1.1 Effects on national law 40 3.2 EPO Rules (draft) 41 4 THE UNIFIED COURT’S JURISDICTION 42 4.1 Brussels I 43 2 4.2 Brussels I amendment consernign UPC 47 4.3 Internal division of competences 49 4.4 Relationship with EPO opposition 50 5 DESIGNATION OF LAW & SUBSTANTIVE LAW 51 5.1 Union law 52 5.1.1 Rome I and Rome II 52 5.1.2 IPRED 55 5.1.3 Supplementary Protection Certificates 55 5.2 Substantive law in UPCA 56 5.2.1 Principles expressed in UPCA 56 5.2.2 Rights conferred and limitations 56 5.2.3 Rules of Procedures
    [Show full text]
  • PCT Newsletter 07-08/2021 (July-August 2021)
    www.wipo.int/pct/en July-August 2021 | No. 07-08/2021 Filing and Processing of International Applications in Electronic Form Ceasing of development, distribution and support for the PCT-SAFE software by the International Bureau As from 30 June 2022, the International Bureau (IB) will end its development, distribution and support of the PCT-SAFE software; the final scheduled release will be in April 2022, and no further updates to the software will be provided after that date. It is recalled that since 1 July 2021, the International Bureau as receiving Office (RO) has no longer been accepting international applications filed in electronic form using the PCT-SAFE software. It is expected that the few remaining ROs that currently accept PCT-SAFE filings will notify the IB that they will no longer accept PCT-SAFE filings after 30 June 2022. Any remaining PCT-SAFE users are strongly advised to transition to ePCT-Filing as soon as possible, if accepted by their competent RO1. For the list of ROs which accept ePCT-Filings (currently 72 Offices2), please refer to: https://pct.wipo.int/ePCTExternal/pages/EFilingServers.xhtml The IB strongly advises applicants, as from 1 July 2022, not to prepare and file PCT applications using any existing versions of the PCT-SAFE software, even if an RO has not yet formally notified the IB by that date that it will no longer accept PCT-SAFE filings. Filers who use PCT-SAFE as from 1 July 2022 will do so at their own risk. Very few applicants still file their international applications using PCT-SAFE, as the majority have already switched to using ePCT-Filing in order to benefit from its many safeguards and other advantages.
    [Show full text]