The European patent is granted by the European Patent Office and has the same effect, in each designated countries, as a national patent.
The European Patent Convention (EPC), in force since 1978 and revised in 2007 (EPC 2000) extends to all countries of the European Union as well as some other European countries.
31 countries have ratified the Convention. It is thus possible to obtain in those countries a protection by way of a European patent granted according to the European Patent Convention.
Furthermore, bilateral agreements have been executed with certain countries of eastern Europe, according to which a European patent is also providing protection in those countries. It is said that the patent is "extended" to those countries with payment of a special extension fee and the mere filing of a translation of the claims of the granted European patent in an official language of the corresponding country.
The aim of the European Patent Convention is to unify the patent granting procedure in the signatory States.
It is not the purpose to grant a single patent valid in all the signatory States, but only to organize and centralize a patentability examination procedure resulting in the grant of a "European patent’’ which, when issued, has the same effects as a national patent in each of the designated countries.
The duration of the protection obtained is 20 years from the filing date. It must be noted that the Convention does not provide for a European patent of addition.
For instance, filing for a European patent application designating France, Germany, Great Britain and Switzerland involves a single search and examining proceeding for obtaining a European patent. On conclusion of the proceeding and after grant of the European patent, the patentee obtains in France, Great Britain, Germany and Switzerland a "European patent" which is treated as regards exercise of such rights as licence grant, assignments, action against infringers, etc. . exactly like a national French, British, German or Swiss patent.
The Convention provides however for a precise number of partial or total revocation grounds of the "European-national" patent :
- lack of patentability as defined in the Convention (the invention must be novel over the prior art and not obvious for a skilled person)
- insufficient disclosure,
- extension of the protection beyond the content of the application as filed,
- obtention by a person which is not the true inventor.
The EPC also provides for guidelines of claims interpretation, taking into consideration equivalent means.
This aims at obtaining at least a comparable interpretation of the European patent by the different Courts of the designated countries.
The main practical advantage of the European patent system is the fact that only one proceeding is required to obtain a patent in almost all the European countries.
A European Patent may also be obtained through filing of a PCT international application designating or electing a member State of the European Patent Convention (Euro PCT application). The granting procedure of Euro PCT application has some specific aspects. The provisions of the PCT apply, supplemented by those of the European Patent Convention. The International search report and its publication take the place of the European search report. A supplementary European search report is drawn up by the European Patent Office if the international search report was not prepared by the European Patent Office itself.
LANGUAGE OF THE PROCEDURE
The European Patent Convention provides for three official languages : English, French, and German.
European patent applications may be filed in any of those languages, and the whole proceeding is conducted in the language initially chosen. However, opponents may file documents in any of the official languages. Furthermore any of the three official languages may be used during oral interviews before the European Patent Office.
When the European patent is granted, it is necessary to file at the national Patent Office translation of the specification and claims of the European patent in order to obtain rights in said countries as long as the granted European patent is not in an official language of said country.
In some other countries, since entry into force of the London Protocol, only the claims must be translated in the local language if the patent has been granted in English, French or German.
Finally, in other countries (such as France or Germany) the European patent is automatically effective without any translation if it has been granted in English.
THE PROCEDURE BEFORE THE EUROPEAN PATENT OFFICE (EPO)
The EPO is located in Munich and The Hague and has a branch office in Berlin.
The EPO comprises Examining Divisions, Boards of Appeal, Opposition Divisions and an Enlarged Board of Appeal in order to unify the interpretation of the Convention.
The filing of patent applications may be made in Munich, The Hague or in any national Office of a signatory State.
The examination proceeding starts after publication of a search report and payment of an examination fee and is made by a three-member Examining Division.
The Examining Division grants the patent if it considers the invention is patentable.
Otherwise it may reject the application. In such a case, the rejection decision may be appealed before a Board of Appeal.
- Patentability requirements
The European Patent Convention establishes four legal requirements to obtain patent protection :
* existing "invention"
* inventive step, defined as non-obviousness
* industrial applicability.
The concept of "invention" is not exactly defined in the Convention which however contains an open list of concepts not to be regarded as inventions including discoveries, mathematical methods, aesthetic creations, methods for performing mental acts and programs for computers, but only to the extent that the European patent relates to such a subject matter "as such", i.e. when the patent relates only to such an excluded activity without any additionnal technical feature.
Novelty and inventive step must be determined with reference to the state of the art, which comprises everything made public prior to the filing or priority date applicable to the patent application. The state of the art comprises therefore any written or oral description in any language and anywhere in the world at any time as well as any prior public use.
In addition, the Convention holds that the whole content of unpublished European patent applications having an earlier priority date is opposable to the novelty of a European patent application. Such unpublished earlier applications are not to be taken into consideration in determining inventive step.
- The European patent application
The European patent application comprises a specification, possibly drawings, and claims (if claims are not filed immediately, they still can be filed after receipt of a communication). All these documents must be drawn up in one of the three official languages (if the application is in a different language, a translation must be filed within two months). The filing language is the language which will be used for the entire procedure as a general rule, though other arrangements remain possible, particularly for oral procedures or opposition proceedings. It is also possible to file an application simply by reference to the number and date of another patent application filed at the EPO or in another patent office provided a certified copy of the previously filed patent application is furnished within two months (this is particularly interesting when filing a divisional application).
The claims define, by their terms, the scope of the protection conferred by the European patent, with the provision that they may be interpreted by means of the specification and drawings. In the event that the clairns are modified during the procedure, the scope of the patent is defined retroactively, inasmuch as the protection has not been extended with regard to the claims which were published by the European Patent Office. It is thus of interest to have a particularly broad wording for the claims in the publication of the European patent application.
Since, under the Convention, the right to European patent belongs to the inventor or his successor in title, the patent application as filed must designate the inventor. In the event that such a designation is not made within a time period of 16 months from the patent application priority date, the application is deemed to be withdrawn. It will be noted that the European patent application may be filed by several distinct persons, each of whom may designate in part different States.
- Fees at time of filing
At the filing of the patent application or at most after one month, the applicant must pay a filing fee and a search fee. Payment of the designation and extension fees for the various countries in which protection is desired may be diferred up to six months from the publication of the search report. Any designation can be withdrawn at any time prior to grant : this is equivalent to abandonment of European patent protection in this country.
- Claim of priority
Claim of priority must be made from 16 months from the date of filing of the initial application. The specification of the initial application must be supplied within the same time period of 16 months from the priority date. Translation into one of the official Convention languages may be requested during examination.
- Maintenance fees
Annual fees must be paid beginning with the third year following the filing of the European patent application, in order to maintain the application in force. As soon as the European patent is granted, annual fees must be paid in each designated country.
- Divisional applications
A European patent application may concern only one invention or group of inventions which form a single overall inventive concept. It is possible to file divisional European applications, at any time before grant of the patent. Such divisional patent applications retain the benefit of the priority date of the initial application ; they may be filed only in Munich or The Hague and in the language of the initial application.
GRANTING PROCEDURE OF EUROPEAN PATENT APPLICATIONS
A formal examination is performed first to check that the various formal requirements have been met, and, in particular, that the fees due have been paid. A European search report is then established, setting forth the results of a novelty search, which is sent to the applicant together with the references quoted and an opinion on patentability.
If the examiner deems that the patent application contains more than one invention, only a partial search report is prepared, and the applicant must pay additional fees, in order to obtain a search report covering the other inventions or file divisional applications, or else await the Examiner’s final opinion on this question.
The European patent application is published after a time period of 18 months following the priority date. This publication comprises not only the initial specification, but also the search report if available, and the claims, with any modifications that the applicant may have made to them after studying the search report. It should be noted that the wording of the claims for publication is important, since it determines the scope of the provisional protection conferred by the European patent application, prior to issuance of the patent itself.
Within a time period of six months from the European Patent Bulletin notice of publication of the search report, the applicant must request that the patentability examination procedure begins, and must pay the corresponding fee.
Examination is performed by an Examining Division made up of three members, who exchange a certain number of notifications with the applicant : these should make it possible to determine acceptably limited claims, with regard to the prior art.
It should be noted that modifications to the patent application, that is either in the specification and drawings or in the claims can be made freely :
- subsequent to receipt of the search report, and prior to receipt of the initial notification from the Examining Division ;
- in response to the initial notification.
Thereafter, any modification can be made only with the agreement of the Examiner.
After receipt of the first notification, the examination by the European Patent Office is relatively rapid, since the number of notifications and replies usually does not exceed two or three. The examination concentrates therefore particularly on the main claims, and the subsidiary claims are examined more quickly.
The major part of the procedure is by writing. However, the applicant may request an oral procedure if particular difficulties are encountered.
When the Examining Division decides in favour of issuance of the European patent application, it so notifies the applicant, who is required to supply a translation of the claims into the other two official languages. Notice of the grant is published in the European Patent Bulletin, after payment of the granting and printing fees. From this date on, the European patent is effective in the various countries designated, provided however that a translation into the local official language has been filed, where this is required by the national legislation, within a time period of three months.
GRANTING PROCEDURE OF EURO PCT APPLICATION
The European patent may be designated as a group of countries when filing a PCT application.
The "regional" or "national" phase at the EPO of PCT applications must be engaged within 31 months of the priority date.
The European patent application generally follows the examination and granting procedure of the EPO and is called a "Euro PCT" application. The following specific features can be noted.
- Designation fees
In the PCT application, all the countries of the EPC are designated at once. When the regional phase of the Euro PCT application is engaged, designations of specific countries of the EPC together with payment of the individual designation fees must be performed within the same time period of 31 months from the priority date.
It is also possible to pay extension fees for Eastern European Countries in which the European patent protection can be extended within the same time period.
- Supplemental search
If the international search has not been performed by the EPO, a supplemental search report is issued by the EPO and a corresponding fee must be paid.
- Examination request
A request for the examination by the EPO must be made within 6 months of publication of the international search report. Usually, this examination request must therefore be filed at the time of engaging the regional phase at the EPO. The examination fee must be paid at the same time.
During examination, the Examiner will rely upon the international preliminary examination report, particularly if the EPO acted as IPEA in which case the European examiner will normally be the same one who drafted said report.
THE OPPOSITION PROCEDURE
A time period of nine months is open following publication of the grant for oppositions by third parties, who may have the European patent revoked by presenting adequate arguments to that end. Thus opposition may lead to complete revocation of the European patent, or to a restriction of its scope in all the designated countries.
The opposing party must present the grounds for opposition, and pay an opposition fee : both these steps must be completed within the nine-month time period mentioned above. Grounds for opposition are :
- lack of patentability as defined in the Convention
- insufficient disclosure
- subject-matter of the patent broader than the content of the application as filed.
The statement of opposition may be written in any of the three official languages of the convention.
An Opposition Division first examines the opposition to determine if the conditions as to form have been met. If the opposition is acceptable as to form, the Opposition Division notifies the patentee that he must reply to the opposition ; an exchange of views then takes place among the patentee, the opposing party, and the Opposition Division, in the same way as during the examination procedure.
A third party against whom an infringement action has been initiated on the basis of the European patent in question may take part in an opposition procedure already engaged, even after expiration of the nine-month time period mentioned above.
At the conclusion of the opposition procedure, if the patent is revoked in its entirety, it is deemed never to have been effective. If, on the other hand, the patent is upheld following modification, the European Patent Office publishes it anew, after the patentee pays an additional printing fee and files a revised translation of the modified claims into both the other official languages.
Complete translation of the revised description and claims must also be filed again in each country where the European patent is to be maintained if the national law so requires.
The Opposition Division may apportion the costs of the opposition procedure on an equitable basis.
Decisions of the various Divisions of the European Patent Office, and more especially those of the Examining Divisions and the Opposition Divisions, may be appealed within a time period of two months from notification of the decision ; however, the statement of the grounds for the appeal may be filed within a time period of four months.
The Convention allows for the possibility that the Division which has made the decision under appeal may choose to reconsider its decision, so as to avoid instituting an appeal procedure.
In the event that such Division does not reconsider its decision, the Board of Appeal examines the appeal with regard to substantive matters through a procedure in which a discussion is held between the European Patent office and the appellant party, in the same way as during examination procedure.
Decisions of the Board of Appeal may be subjected to revision upon request of one party, before the Enlarged Board of Appeal.
RIGHTS CONFERRED BY THE EUROPEAN PATENT
From its publication the European patent application confers a provisional protection in the designated countries in the same way as would a national patent application published before examination. This provisional protection is however only effective after filing a translation of the claims of the application in one official language of the country in question.
The rights conferred by the granted European patent are the same as those conferred by a national patent in each designated country. The Convention leaves the national legislations decide the rules to apply in case of infringement.
Depending on the national law, translation in an official language of the respective country must be filed within a time period of three months after publication of the grant of the European patent or only at the time of a court litigation.
During the life of the granted European patent, the patentee may ask the European Patent Office to proceed to a limitation of the claims.
This can be useful for example if a prior art reference has been found after grant of the patent. The patentee can then obtain a central limitation of the patent for all designated countries, before engaging one or several infringement actions.
The European Patent Office examines the limitation request and checks only if the proposed amended claims are clear and concise and effectively limit the protection. No novelty or inventive step examination is performed.
If the limitation is accepted, the EPO publishes a new patent which has a limited effect in all designated countries (provided translations are filed if required).