European Patent Convention

European Patent Convention
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The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention (EPC), is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, after grant a European patent is not a unitary right, but a group of essentially independent nationally-enforceable, nationally-revocable patents,[1] subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The EPC provides a legal framework for the granting of European patents,[2] via a single, harmonized procedure before the European Patent Office. A single patent application, in one language,[3] may be filed at the European Patent Office at Munich,[4] at its branches at The Hague[4] or Berlin[5] or at a national patent office of a Contracting State, if the national law of the State so permits.[6]

There is currently no single, centrally enforceable, European Union-wide patent. Since the 1970s, there has been concurrent discussion towards the creation of a Community patent in the European Union. In May 2004 however, this has led to a stalemate.

Contents

Background and rationale

Before 1978, two important problems when seeking to obtain patent protection in Europe in a number of countries were first the need to file a separate patent application in each country, with a subsequent distinct grant procedure in each country, and secondly the need to translate the text of the application into a number of different languages. Different languages are indeed utilised across the European countries and there is substantial expense in preparing translations into each of those languages. While the European Patent Convention does not totally overcome the need for translations (since a translation may be required after grant to validate a patent in a given EPC Contracting State), it does centralise the prosecution in one language and defers the cost of translations until the time of grant.

History

In September 1949, French Senator Henri Longchambon proposed to the Council of Europe the creation of a European Patent Office. His plan was however not found to be practicable by the Council's Committee of Experts in patent matters. The meetings of the Committee nevertheless led to two Conventions, one on the formalities required for patent applications (1953) and one on the international classification of patent (1954).[12] The Council's Committee then carried on its work on substantive patent law, resulting in the signature of the Strasbourg Patent Convention in 1963.[12]

In 1973, the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents took place and the Convention was then signed in Munich (the Convention is sometimes known as the Munich Convention). The signature of the Convention was the accomplishment of a decade-long discussion during which Kurt Haertel, considered by many as the father of the European Patent Organisation, and François Savignon played a decisive role.

The Convention entered into force on 7 October 1977 for the following first countries: Belgium, Germany (then West Germany), France, Luxembourg, Netherlands, Switzerland and United Kingdom, and on 1 May 1978 for Sweden. However, the first patent applications were filed on 1 June 1978 (date fixed by the Administrative Council which held its first meeting on 19 October 1977). Subsequently, other countries have joined the EPC.

The EPC is separate from the European Union (EU), and its membership is different; Switzerland, Liechtenstein, Turkey, Monaco, Iceland, Norway, Croatia, the Republic of Macedonia, San Marino, Albania and Serbia are members of the EPO but are not members of the EU. The Convention is, as of October 2010, in force in 38 countries.[13] Serbia became the 38th state on 1 October 2010.[9]

In addition to the Contracting States, States may also conclude a cooperation agreement with the EPO, known as an extension agreement. The state then becomes "extension state", which means European patents granted by the EPO may be extended to those countries by the payment of additional fees and completion of certain formalities. As of October 2010, Bosnia and Herzegovina, and Montenegro[10] have extension agreements with the EPO so that, in effect, these states can be designated in a European patent application.

A diplomatic conference was held in November 2000 in Munich to revise the Convention, amongst other things to integrate in the EPC new developments in international law and to add a level of judicial review of the Boards of Appeal decisions. The revised text, informally called the EPC 2000, entered into force on 13 December 2007.[14][15]

Legal nature and content

The European Patent Convention is "a special agreement within the meaning of Article 19 of the Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883 and last revised on 14 July 1967, and a regional patent treaty within the meaning of Article 45, paragraph 1, of the Patent Cooperation Treaty of 19 June 1970."[16]

The content of the Convention includes several texts in addition to the main 178 articles. These additional texts, which are integral parts of the Convention,[17] are

Substantive patent law

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Legal requirements
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Article 52(1) EPC, entitled "Patentable inventions", states:

"European patents shall be granted for

This article constitutes the "fundamental provision of the EPC which governs the patentability of inventions".[19]

However, the EPC provides further indications on what is patentable. There are exclusions under Article 52(2) and (3) EPC and exclusions under Article 53 EPC.

First, discoveries, scientific theories, mathematical methods,[20] aesthetic creations,[21] schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers[22] and presentations of information[23] are not regarded as inventions[24] and are excluded from patentability only to the extent that the invention relates to those areas as such.[25] This is "a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Article 52(1) EPC."[19] (For further information, see also: Software patents under the EPC).

The second set of exclusions, or exceptions, include

  • inventions contrary to "ordre public" or morality,[26]
  • plant or animal varieties and essentially biological processes for the production of plants and animals,[27] and
  • methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body,[28] which have been excluded for "socio-ethical considerations and considerations of public health".[29]

Unified prosecution phase

Main article: Grant procedure before the European Patent Office

The Convention also includes provisions setting out filing requirements of European applications, the procedure up to grant, the opposition procedure and other aspects relating to the prosecution of patent applications under the Convention.

European patent applications may be filed in any official language of an EPC contracting state (subject to certain requirements),[dated info] but patent applications are prosecuted in the three official languages of the EPO - English, French and German (if an application is filed in a language other than the official languages, a translation must be filed into one of the three. The filing fee is reduced to offset the additional cost of the translation). The official language of filing (or of the translation) is adopted as the "language of proceedings" and is used by the EPO for communications.

European patent applications are prosecuted in a similar fashion to most patent systems - the invention is searched and published, and subsequently examined for compliance with the requirements of the EPC.

During the prosecution phase, a European patent is a single regional proceeding, and "the grant of a European patent may be requested for one or more of the Contracting States."[30] An applicant for a European patent designates those Contracting States in which protection for the invention is desired,[31][dated info] and the designations need to be "confirmed" later during the procedure through the payment of designation fees.[32] Once granted by the EPO,[33] a European patent comes into existence effectively as a group of national patents in each of the designated Contracting States.

Opposition

Main article: Opposition procedure before the European Patent Office

There are only two types of centrally executed procedures after grant, the opposition procedure and the limitation and revocation procedures. The opposition procedure, governed by the EPC, allows third parties to file an opposition against a European patent within 9 months of the date of grant of that patent.[34] It is a quasi-judicial process, subject to appeal, which can lead to maintenance, maintenance in amended form or revocation of a European patent. Simultaneously to the opposition, a European patent may be the subject of litigation at a national level (for example an infringement dispute). National courts may suspend such infringement proceedings pending outcome of the opposition proceedings to avoid proceedings running in parallel and the uncertainties that may arise from that.

Grant, effect and need for translations

In contrast to the unified, regional character of a European patent application, the granted European patent does not comprise, in effect, any such unitary character, except for the opposition procedure.[35] In other words, one European patent in one Contracting State[36] is effectively independent of the same European patent in each other Contracting State, except for the opposition procedure.

A European patent confers rights on its proprietor, in each Contracting State in respect of which it is granted, from the date of publication of the mention of its grant in the European Patent Bulletin.[37] That is also the date of publication of the B1 document, i.e. the European patent specification.[38] This means that the European patent is granted and confers rights in all its designated Contracting States at the date of mention of the grant, whether or not a prescribed translation is filed with a national patent office later on (though the right may later be deemed never to have existed in any particular State if a translation is not subsequently filed in time, as described below).

A translation of a granted European patent must be filed in some EPC Contracting States to avoid loss of right. Namely, in the Contracting States which have "prescribe[d] that if the text, in which the European Patent Office intends to grant a European patent (...) is not drawn up in one of its official languages, the applicant for or proprietor of the patent shall supply to its central industrial property office a translation of this text in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language".[39] The European patent is void ab initio in a designated Contracting State where the required translation (if required) is not filed within the prescribed time limit after grant.[40] In other Contracting States, no translation needs to be filed, for example in Ireland if the European patent is in English. In those Contracting States where the London Agreement is in force the requirement to file a translation of the European patent has been entirely or partially waived.[41] If a translation is required, a fee covering the publication of said translation may be due as well.[42]

Enforcement and validity

Main article: Enforcement of European patents

Almost all attributes of a European patent in a Contracting State, i.e. ownership, validity, and infringement, are determined independently under respective national law, except for the opposition procedure, limitation procedure, and revocation procedure as discussed above. Though the EPC imposes some common limits, the EPC expressly adopts national law for interpretation of all substantive attributes of a European patent in a Contracting State, with a few exceptions.[43] Thus, almost all post-grant proceedings - including renewal, revocation,[dated info] and infringement enforcement are determined under national law.

Infringement is remitted almost entirely to national law and to national courts.[44] In one of its very few substantive interventions into national law, the EPC requires that national courts must consider the "direct product of a patented process" to be an infringement.[45] The "extent of the protection" conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims.[46] A "Protocol on the Interpretation of Article 69 EPC" provides further guidance, that claims are to be construed using a "fair" middle position, neither "strict, literal" nor as mere guidelines to considering the description and drawings, though of course even the protocol is subject to national interpretation.[47] The authentic text of a European patent application and of a European patent are the documents in the language of the proceedings.[48][49]

All other substantive rights attached to a European patent in a Contracting State, such as what acts constitute infringement (indirect and divided infringement, infringement by equivalents, extraterritorial infringement, infringement outside the term of the patent with economic effect during the term of the patent, infringement of product claims by processes for making or using, exports, assembly of parts into an infringing whole, etc.), the effect of prosecution history on interpretation of the claims, remedies for infringement or bad faith enforcement (injunction, damages, attorney fees, other civil penalties for willful infringement, etc.), equitable defenses, coexistence of an EP national daughter and a national patent for identical subject matter, ownership and assignment, extensions to patent term for regulatory approval, etc., are expressly remitted to national law.[50]

For a period in the late-1990's, national courts issued cross-border injunctions covering all EP jurisdictions, but this has been limited by the European Court of Justice. In two cases in July 2006 interpreting Articles 6.1 and 16.4 of the Brussels Convention, the European Court of Justice held that European patents are national rights that must be enforced nationally, that it was "unavoidable" that infringements of the same European patent have to be litigated in each relevant national court, even if the lawsuit is against the same group of companies, and that cross-border injunctions are not available.[51]

Validity is also remitted largely to national law and national courts. Article 138(1) EPC limits the application of national law to only the following grounds of invalidity, and specifies that the standards for each ground are those of national law:

A national court may partially invalidate a European patent in a Contracting State, e.g., by revoking only some claims, or by permitting amendment to the claims, the description or the drawings, as allowed by national law.

A European patent is also non-unitary in that it may be revoked in one Contracting State while maintained in another. However, a national court in one Contracting State may not revoke a European patent in another Contracting State.

EPO Boards of Appeal decisions are not precedential at all upon national courts, which have exclusive jurisdiction on validity and infringement after a European patent has been granted (except during the 9 month opposition period, which can only relate to validity). However, national courts will tend to take note, and may find 'persuasive', decisions of the EPO Boards, though they can disagree with them.

The EPC requires all jurisdictions to give a European patent a term of 20 years from the filing date,[56] the filing date being the actual date of filing an application for a European patent or the date of filing of an international application under the PCT designating the EPO. The filing date is not necessarily the priority date, which can be up to one year earlier. The term of a granted European patent may be extended under national law if national law provides term extension to compensate for pre-marketing regulatory approval.[57] For EEA member states this is by means of a supplementary protection certificate.

Relation with the Patent Cooperation Treaty

A European patent application may result from the filing of an international application under the Patent Cooperation Treaty (PCT) and the entry into "European regional phase".[58] The European patent application is therefore said to be a "Euro-PCT application" and the EPO is said to act as a designated or elected Office.[59] In case of conflict between the provisions of the EPC and those of the PCT, the provisions of the PCT and its Regulations prevail over those of the EPC.[60]

Eleven EPC Contracting States, namely Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands and Slovenia have "closed their national route".[61] This means that it is no longer possible to obtain a national patent protection through the international (PCT) phase without entering into the regional European phase and obtaining a European patent.

See also

See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications.

See also "European Patent Organisation" box below.

Notes

  1. ^ The view that a European patent issues as independent national patents in each designated Contracting state is very convenient from a practical point of view. Some however consider this view as incorrect:
    "The view that, after grant, a European patent breaks up into a bundle of national patents in designated Contracting States may appear plausible, but it is incorrect both in law and systematically", Singer/Stauder, The European Patent Convention, A Commentary, Munich, 2003, under Article 2.
    Singer/Stauder's view seems in turn rather theoretical in view of decisions Roche Nederland BV v Primus and GAT v LUK of the European Court of Justice (see also "Enforcement and validity" section), which reinforced the independent character of a European patent in each Contracting State. As Tom Scourfield wrote in an article commenting on these two decisions:
    "(...) a European patent is no more than a bundle of national patents pursuant to a single application. Until a true community patent becomes a reality it seems likely that true community enforcement will continue to elude patent owners." Tom Scourfield, Jurisdiction and Patents: ECJ rules on forum for validity and cross-border patent enforcement, The CIPA Journal, August 2006, Volume 35 No. 8, p. 535.
  2. ^ Article 2(1) EPC
  3. ^ Article 14 EPC
  4. ^ a b Article 75(1)(a) EPC
  5. ^ Decision of the President of the European Patent Office dated 10 May 1989 on the setting up of a Filing Office in the Berlin sub-office of the European Patent Office, OJ 1989, 218
  6. ^ Article 75(1)(b) EPC
  7. ^ EPO web site, San Marino accedes to the European Patent Convention, Updates, May 8, 2009. Consulted on May 8, 2009. See also EPO, San Marino accedes to the European Patent Convention, EPO Official Journal 6/2009, p. 396.
  8. ^ Albania accedes to the European Patent Convention, Updates, March 1, 2010. Consulted on May 2, 2010.
  9. ^ a b Serbia accedes to the European Patent Convention, July 30, 2010. Consulted on July 31, 2010.
  10. ^ a b EPO web site, Extension of European patents to Montenegro (ME), 12 January 2010. Consulted on January 15, 2010.
  11. ^ Guidelines for Examination in the EPO foreword_7 : General Part: Extension to states not party to the EPC.
  12. ^ a b G. W. Tookey, Patents in the European Field in Council of Europe, Council of Europe staff, European Yearbook 1969, Martinus Nijhoff Publishers, 1971, pages 76-97, ISBN 9024712181.
  13. ^ EPO web site, EPO member states, retrieved on October 1, 2010.
  14. ^ Official Journal of the EPO, 2/2006, Notice from the European Patent Office dated 27 January 2006 concerning deposit of the fifteenth instrument of ratification of the EPC Revision Act
  15. ^ EPO web site, Frequently asked questions about the revised European Patent Convention (EPC 2000), item 2. Consulted on 31 October 2007.
  16. ^ Preamble of the European Patent Convention.
  17. ^ Article 164(1) EPC
  18. ^ The state of the art is further defined in Art. 54(2)-(5), and a limited grace period is specified in Article 55 EPC, but this is only relevant in cases of breach of confidence or disclosure of the invention in a recognised international exhibition.
  19. ^ a b Decision T 154/04 of November 15, 2006, Reasons 6, to be published at the Official Journal of the European Patent Office.
  20. ^ Article 52(2)(a) EPC
  21. ^ Article 52(2)(b) EPC
  22. ^ Article 52(2)(c) EPC
  23. ^ Article 52(2)(d) EPC
  24. ^ Article 52(2) EPC
  25. ^ Article 52(3) EPC
  26. ^ Article 53(a) EPC
  27. ^ Article 53(b) EPC
  28. ^ Article 53(c) EPC
  29. ^ Decision G 1/07 of February 15, 2010, Reasons 3.3.6. See also G 1/07.
  30. ^ Article 3 EPC
  31. ^ Article 79 EPC
  32. ^ Article 79(2) EPC
  33. ^ Article 4 EPC
  34. ^ Article 99 EPC
  35. ^ In addition to the opposition procedure and even after it has ended, particular acts can still be performed before the European Patent Office, such as requesting a rectification of an incorrect designation of inventor under Rule 19(1) EPC.[dated info] "Rectification may [indeed] be requested after the proceedings before the EPO are terminated" (Guid. A III 5.6).
  36. ^ There is no consistent usage of a particular expression to refer to "the European patent in a particular designated Contracting State for which it is granted". The article uses the expression "a European patent in a Contracting State" which is considered to be the most consistent with the authoritative text, i.e. the EPC.
  37. ^ Article 64(1) EPC: EP patent has same effect as national patent in "each Contracting State in respect of which it is granted"; Article 97(2) and (4) EPC: decision to grant "for the designated Contracting States" is made by the examining division.
  38. ^ Article 98 EPC
  39. ^ Article 65(1) EPC
  40. ^ Article 65(3) EPC
  41. ^ Veronese & Watchorn 2011, Chapter XI.4
  42. ^ Article 65(2) EPC; National law, Chapter IV, Filing of translations of the patent specification under Article 65 EPC (regarding implementation in EPC Contracting States)
  43. ^ e.g. Article 2(2) EPC, Article 64(1) and(3) EPC, Article 66 EPC, Article 74 EPC
  44. ^ Article 64(1) EPC
  45. ^ Article 64(2) EPC
  46. ^ Article 69(1) EPC
  47. ^ E.g., Southco Inc v Dzus, [1992] R.P.C. 299 CA; Improver Corp. v Remington Products Inc [1990] FSR 181.
  48. ^ Article 70 EPC
  49. ^ Singer & Stauder 2003, under Article 2, section "EPC provisions on European patents that take precedence over national law"
  50. ^ Article 2(2) EPC
  51. ^ Case C-4/03, Gesellschaft für Antriebstechnik v Lamellen und Kupplungsbau Beteiligungs KG, (European Ct. of Justice 13 July 2006); Case C-539/03, Roche Nederland BV v Primus, (European Ct. of Justice 13 July 2006)
  52. ^ Article 138(1)(b) EPC
  53. ^ Article 138(1)(c) EPC, Article 123(2) EPC
  54. ^ Article 138(1)(d) EPC, Article 123(3) EPC
  55. ^ Article 138(1)(e) EPC, Article 60 EPC
  56. ^ Article 63(1) EPC
  57. ^ Article 63(2)(b) EPC
  58. ^ See Article 11(3) PCT, which provides a legal fiction according to which an international application, i.e. a PCT application, has the effect of a regular European patent application as of the international filing date under certain conditions (see for instance Decision J 18/09 of the Legal Board of Appeal 3.1.01 of 1 September 2010, Reasons 7 and 8); and Article 150(2), (first sentence) EPC: "International applications filed under the PCT may be the subject of proceedings before the European Patent Office."
  59. ^ Guidelines for Examination in the EPO, A.VII. Applications under the Patent Cooperation Treaty (PCT) before the EPO acting as a designated or elected Office.
  60. ^ Article 150(2), (third sentence) EPC
  61. ^ For Malta, source: "European Patent Office web site, Accession to the PCT by Malta (MT), Information from the European Patent Office, January 2, 2007; for Latvia, source: Latvia: Closing of the National Route via the PCT, PCT Newsletter of April 2007.

References

  • Singer, Margarete; Stauder, Dieter (2003), The European Patent Convention: A Commentary (3rd ed.), Sweet & Maxwell, ISBN 0-421-83150-2 
  • Veronese, Andrea; Watchorn, Peter (2011), Procedural law under the EPC-2000 (2nd ed.), Wolnzach: Kastner AG, ISBN 978-3-941951-29-7 

Further reading

  • Martijn van Empel, The Granting of European Patents, Introduction to the Convention on the Grant of European Patents, Munich, 5 October 1973, Kluwer Academic Publishers Group, 1975, ISBN 90-286-0365-4
  • Gerald Paterson, The European Patent System: The Law and Practice of the European Patent Convention, Sweet & Maxwell, second edition, 2001, ISBN 0-421-58600-1
  • Derk Visser, The Annotated European Patent Convention, H. Tel Publisher bv

External links

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