I.STRATEGIC/OPERATIONAL

1.Strategic

II.RECOMMENDATION

2.The Administrative Council is requested to authorise the President to conclude the annexed draft agreement on behalf of the European Patent Organisation.

III.MAJORITY NEEDED

3.Three quarters

IV. CONTEXT

4.At its 128th meeting, the Council authorised the President to enter into negotiations with Tunisia on a validation agreement (see CA/57/11), with the resulting draft agreement being submitted in due course for Council approval.

V.ARGUMENTS

5.In August 2012, the EPO and Tunisia reached agreement on the text of a validation agreement, including a non-binding attachment containing model provisions for national implementation of the validation system.

6.With regard to the translation requirements to be fulfilled in order for European patents to take effect on the territory of Tunisia, agreement was reached that the owner can opt inter alia for English or French. This means that de facto no extra translations will have to be provided for most European patents granted by the EPO.

7.After signature, the agreement would enter into force on a date to be determined by an exchange of notes between the President of the EPO and the head of Tunisia's INNORPI (National Institute for Standardization and Industrial Property), following the enactment by Tunisia of legal provisions implementing the validation system (Article 11 of the draft agreement).

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VI. ALTERNATIVES

∙not to approve the annexed draft agreement

∙to approve it in amended form

∙to postpone the matter to a later Council meeting.

VII. FINANCIAL IMPLICATIONS

8.Under Article 6 of the draft agreement the amount of the validation fee and the proportion to be retained by the EPO are to be laid down by agreement between the EPO and INNORPI. This includes the possibility of future changes in the amount and proportion of the fee fixed initially, and of updating the fee in regular biennial adjustments.

9.It can be assumed that the possibility of validating European patents in Tunisia will be an attractive option for applicants. The number of validation requests for Tunisia is expected to be similar to the number of extension requests currently received for Bosnia and Herzegovina, i.e. about 3 500 per year. Since the validation agreement will apply only to European patent applications filed after its entry into force and validation fees are paid two years after filing (on average), the EPO could expect additional validation-fee income some two years after the validation agreement with Tunisia enters into force. As the procedural arrangements for the validation system are identical to those for the existing extension system (see e.g. CA/74/08), no significant additional costs are expected.

VIII. LEGAL BASIS

10.Article 33(4) EPC in conjunction with Article 35(2) EPC.

IX. DOCUMENTS CITED

11.CA/74/08, CA/57/11.

X.RECOMMENDATION FOR PUBLICATION

12.Yes

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ANNEX 1 VALIDATION AGREEMENT

AGREEMENT BETWEEN THE

GOVERNMENT OF THE REPUBLIC OF TUNISIA

AND THE

EUROPEAN PATENT ORGANISATION

ON

VALIDATION OF EUROPEAN PATENTS

(VALIDATION AGREEMENT)

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THE GOVERNMENT OF THE REPUBLIC OF TUNISIA ("Tunisia"), represented by Mohamed Lamine Chakhari, Minister of Industry,

and

THE EUROPEAN PATENT ORGANISATION ("the Organisation"), represented by Benoît Battistelli, President of the European Patent Office ("the EPO"),

HAVING REGARD

to the Convention on the Grant of European Patents of 5 October 1973 as last revised by the Act revising the European Patent Convention of 29 November 2000 ("European Patent Convention") and in particular Article 33(4) thereof,

to the Tunisian Law No. 2000-84 of 24 August 2000 on patents of invention,

TAKING INTO ACCOUNT

that Tunisia intends to provide for a level of protection similar to that existing in the member states of the Organisation,

that Tunisia will provide for a system enabling the effects of European patent applications and patents to be validated on request in its territory by introducing into its national law the provisions annexed to the present agreement ("validation system"),

WHEREAS

Tunisia is a party to the Patent Cooperation Treaty and has designated the EPO as International Searching and Preliminary Examining Authority under the said Treaty,

RECOGNISING

the need fully to apply the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement),

NOTING

the request of Tunisia for support by the EPO in implementing the validation system,

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CONVINCED

that the establishment of a validation system between the Organisation and Tunisia is of mutual interest and will strengthen the protection of industrial property in Tunisia,

that the validation system will contribute to the achievement of the goals set by the EU's European Neighbourhood Policy and support the EU's plans to gradually integrate the Tunisian economy into the EU internal market,

HAVE AGREED AS FOLLOWS:

Article 1

Subject of the Agreement

The contracting parties shall co-operate within the scope of this Agreement to develop an efficient system of validation of European patents in Tunisia.

Article 2

Technical and legal assistance

Within the scope of its capabilities the Organisation shall provide Tunisia with technical and legal assistance necessary for the implementation of the validation system.

Article 3

Legal and administrative co-operation

(1)The contracting parties shall regularly exchange information on legal developments relating to their respective patent systems.

(2)If requested by the National Institute for Standardization and Industrial Property ("the Institute") to do so, the EPO shall within the scope of its capabilities give advice on proposals for introducing or amending legal provisions relating to Tunisia's patent system.

Article 4

Processing of requests for validation

(1)The EPO shall accept, process and publish any request for validation of European patents in Tunisia and shall communicate to the Institute any necessary information regarding the proceedings relating to the European patent applications and patents concerned.

(2)Within the scope of its capabilities, the EPO shall on request give assistance to the Institute by communicating any other useful information.

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Article 5

Information concerning validated European patents

The Institute shall inform the EPO of the legal status of any validated European patent, in particular of its being void or of its lapse, limitation, renunciation or revocation.

Article 6

Financial matters

(1)For each request for validation a validation fee shall be due to the EPO. The President of the EPO shall lay down the amount of the validation fee and the proportion to be retained by the EPO, by agreement between the EPO and the Institute. The Institute's share of this fee income shall be paid to it quarterly under arrangements agreed between the EPO and the Institute.

(2)The amount of the validation fee and the proportion retained by the EPO may be amended by agreement between the President of the EPO and the Director General of the Institute.

Article 7

Joint committee

(1)A joint committee shall be set up to discuss all matters arising from this Agreement and its implementation. The committee shall be composed of representatives of the EPO and the Institute. Representatives of other government bodies of Tunisia involved in or directly affected by the implementation of this Agreement may be consulted. The committee shall meet regularly, at either the Institute or the EPO.

(2)The committee shall meet at the initiative of either the Director General of the Institute or the President of the EPO. The agenda, venue and date for each meeting shall be fixed by agreement between the two offices.

Article 8

Implementation of the Agreement

(1)The tasks arising for the contracting parties from this Agreement shall be carried out by the EPO and the Institute. The EPO may entrust individual tasks under Article 2 of this Agreement to the patent offices of the EPC contracting states, subject to their consent.

(2)The details of the implementation of this Agreement shall be fixed by agreement between the Director General of the Institute and the President of the EPO.

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Article 9

Amendment of the Agreement

At the request of the Organisation or of Tunisia, the contracting parties shall enter into negotiations on amending this Agreement, with the exception of the provisions of Article 6.

Article 10

Duration of the Agreement

(1)This Agreement shall be concluded for a period of five years, and shall be extended for further five-year periods unless a contracting party objects to this in writing no later than six months prior to the end of the five-year period in force.

(2)Notwithstanding paragraph 1, this Agreement may be terminated at any time in writing by either contracting party; termination shall take effect one year after receipt by the other party of the notice of termination, unless the said notice specifies a longer period or the contracting parties agree on a shorter period.

(3)If this Agreement is terminated, Articles 4 to 6 shall continue to apply to any European patent application in respect of which a request for validation has been filed prior to termination, and to any European patent granted thereon.

Article 11

Entry into force

The date of entry into force of this Agreement shall be determined by an exchange of notes between the President of the EPO and the Director General of the Institute, following the enactment by Tunisia of provisions in accordance with those attached to this Agreement.

Done at ..........	on .............	in two originals in the Arabic, English, French and German
languages, each text being equally authentic.
For the Government of the			For the European Patent
Republic of Tunisia			Organisation

Mohamed Lamine CHAKHARI	Benoît BATTISTELLI
Minister of Industry	President of the European
	Patent Office

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Annex

Model provisions governing the validation of European patents in Tunisia on request

Article 1

Validation of European patents

(1)Subject to the provisions below, a European patent application and a European patent validated in Tunisia shall have the effect of and be subject to the same conditions as a national patent application and a national patent under Tunisia's Patent Law (PL).

(2)For the purposes of these provisions,

(a)"European patent application" means an application for a European patent filed under the European Patent Convention (EPC) or an international application filed under the Patent Cooperation Treaty (PCT) for which the European Patent Office (EPO) acts as designated or elected Office and in which Tunisia is designated;

(b)"validated European patent" means a European patent granted by the EPO on a European patent application in respect of which validation in Tunisia has been requested;

(c)"national patent application" means a patent application filed under the PL with the National Institute for Standardization and Industrial Property (the Institute);

(d)"national patent" means a patent granted on a national patent application.

Article 2

Request for validation

(1)A European patent application and a European patent granted on such application shall be validated in Tunisia at the request of the applicant. The request for validation shall be deemed to be filed with any European patent application filed on or after the date on which the validation agreement between the government of the Republic of Tunisia and the European Patent Organisation enters into force.

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(2)The Institute shall publish any request for validation as soon as possible after it has been informed by the EPO that the prescribed validation fee has been paid, but not before the expiry of 18 months from the filing date or, if priority has been claimed, the earliest priority date.

(3)The request for validation may be withdrawn at any time prior to grant of the patent. It shall be deemed withdrawn where the prescribed validation fee has not been paid within the period laid down in Article 3, or where the European patent application has been finally refused, withdrawn or deemed withdrawn. The Institute shall publish this information as soon as possible if it has already published the request for validation in accordance with paragraph 2.

Article 3

Validation fee

(1)The validation fee under Article 2(2) shall be paid to the EPO within six months of the date on which the European Patent Bulletin mentions the publication of the European search report or, where applicable, within the period for performing the acts required for entry into the European phase of an international application within the meaning of Article 1(2)(a).

(2)The validation fee may still be validly paid within an additional period of two months of expiry of the period referred to in paragraph 1, provided that a 50% surcharge is paid within this additional period.

(3)The EPO's Rules relating to Fees shall apply mutatis mutandis to the payment of validation fees. Validation fees validly paid shall not be refunded.

Article 4

Effects of European patent applications

(1)A European patent application which has been accorded a filing date shall be equivalent to a regular national patent application, where appropriate with the priority claimed for the European patent application, whatever its outcome may be.

(2)A published European patent application shall provisionally confer the same protection as is conferred by a published national patent application as from the date on which a translation of the claims of the published European patent application into Arabic, English or French has been made available to the public by the Institute.

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(3)If the request for validation is withdrawn or deemed withdrawn, the European patent application shall be deemed not to have had ab initio the effects referred to in paragraph 2.

Article 5

Effects of European patents

(1)Subject to paragraphs 2 to 7, a validated European patent shall confer, as from the date of publication of the mention of its grant by the EPO, the same rights as would be conferred by a national patent under the Patent Law.

(2)Within three months of the date on which the mention of the grant of the European patent has been published, the proprietor of the patent shall furnish to the Institute the text or a translation of the European patent specification as granted in Arabic, English or French and pay the prescribed fee for registering a validated European patent, the amount of which shall be laid down by decree.

(3)If, as a result of an opposition or a request for limitation filed with the EPO, the European patent is maintained in amended form, the proprietor of the patent shall provide the Institute, within three months of the date on which the mention of the decision to maintain the European patent as amended or to limit it was published, with the text or a translation of the European patent specification as amended or limited in Arabic, English or French and pay the prescribed registration fee.

(4)If the text of the claims contains reference signs used in the drawings, such drawings shall be attached to the translation referred to in paragraphs 2 and 3.

(5)The Institute shall publish as soon as possible the text or translation duly filed under paragraph 2 or 3.

(6)If the text or translation specified in paragraph 2 or 3 is not filed in due time or the registration fee is not paid in due time, the validated European patent shall be deemed void ab initio. The text or the translation may still be validly filed within an additional period of three months as from expiry of the relevant periods referred to in paragraphs 2 and 3, provided that within this additional period a 100% surcharge on the registration fee is paid.

(7)A validated European patent and the European patent application on which it is based shall be deemed not to have had ab initio the effects specified in paragraph 1 and Article 4(2) to the extent that the patent has been revoked in opposition or central revocation proceedings or limited in limitation proceedings before the EPO.

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Article 6

Authentic text of European patent applications or European patents

(1)The text of a European patent application or a European patent in the language of the proceedings before the EPO shall be the authentic text in any proceedings before the Tunisian courts.

(2)However, the translation under Articles 4 and 5 shall be regarded as authentic, except in revocation proceedings, if the application or patent in the language of the translation confers protection which is narrower than that conferred by it in the language of the proceedings.

(3)The applicant for a European patent or patent proprietor of a validated European patent may provide the Institute at any time with a corrected translation accompanied by the prescribed registration fee. The corrected translation of the claims of a published European patent application and the corrected translation of the European patent as granted shall have no legal effect until the Institute has made them available to the public.

(4)Any person who, in good faith, uses or has made effective and serious preparations for using an invention, the use of which would not constitute infringement of the application or patent in the original translation may, after the corrected translation takes effect, continue such use, without payment, in the course of his business or for the needs thereof.

Article 7

Rights of earlier date

(1)A European patent application for which the validation fee has been paid and a validated European patent shall have with regard to a national patent application and a national patent the same prior-art effect as a national patent application and a national patent.

(2)A national patent application and a national patent shall have with regard to a validated European patent the same prior-art effect as they have with regard to a national patent.

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Article 8

Simultaneous protection

If a validated European patent and a national patent with the same filing date or, where priority has been claimed, the same priority date have been granted to the same person or his successor in title, the national patent, to the extent that it covers the same invention as the validated European patent, shall have no effect as from the date on which the time limit for filing an opposition to the European patent has expired without an opposition having been filed, or as from the date on which a final decision maintaining the European patent has been taken.

Article 9

Renewal fees for validated European patents

(1)Renewal fees for a validated European patent shall be paid to the Institute for the years following the year in which the mention of the grant of the European patent was published.

(2)If renewal fees for a validated European patent fall due within two months as from the date on which the mention of the grant of the patent was published in the European Patent Bulletin, they shall be deemed to have been validly paid provided they were paid to the Institute within the period mentioned. No surcharge under Tunisian patent law shall be payable.

Article 10

Applicability of the EPC

Unless the present provisions state otherwise, the EPC and its Implementing Regulations shall not apply.

___________

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