European Patents

From IP::JUR

Contents 1 Overview 2 European Patents Grant 3 European Patents Renewal 4 European Patents Oppositions 5 EuroPCT: EPO acting as Designated Office

Overview

On a Diplomatic Conference held in Munich on October 05, 1973, representatives of a group of European countries had concluded a Convention (Now called European Patent Convention or «EPC) which establishes a European Patent Organisation and which constitutes 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 Co-operation Treaty of 19 June 1970. Meanwhile, there are 32 Member States of the EPC:

AT	Austria	IS	Iceland
BE	Belgium	IT	Italy
BG	Bulgaria	LI	Liechtenstein
CH	Switzerland	LT	Lithuania
CY	Cyprus	LU	Luxembourg
CZ	Czech Republic	LV	Latvia
DE	Germany	MC	Monaco
DE	Denmark	NL	Netherlands
EE	Estonia	PL	Poland
ES	Spain	PT	Portugal
FI	Finland	RO	Romania
FR	France	DE	Sweden
GB	United Kingdom	SI	Slovenia
GR	Greece	SK	Slovakia
HU	Hungary	TR	Turkey
IE	Ireland	MT	Malta

Moreover, there are in addition 5 so-called "Extension States". By virtue of their respective national Law, a European patent can be «extended» to their respective national territory provided some prescribed formalities are observed.

AL	Albania	MK	former Yugoslav Republic of Macedonia
BA	Bosnia and Herzegovina	YU	Serbia and Montenegro
HR	Croatia

It is worth noting that the EPC is not directly related to the European Union (EU). In particular, Bulgaria, Iceland, Romania, Switzerland and Turkey are EPC Member States but do not belong to the EU.

The EPC is available on-line on the Web server of the EPO via the URL http://www.european-patent-office.org/legal/epc/e/contents.html

According to Art. 1 of the EPC, a system of law, common to the Contracting States, for the grant of patents for invention is established. Patents granted by virtue of this Convention are called European patents. A European patent has, in each of the Contracting States for which it is granted, the effect of and be subject to the same conditions as a national patent granted by that State, unless otherwise provided in the EPC (Art. 2 and 3 EPC). A European Patent is not unitary in its nature, in fact the grant of a European patent may be requested for one or more of the Contracting States (Art. 4 EPC) in accordance with the applicant's needs.

The European Patent Office (EPO) seated in Munich with branches in The Hague (NL), Berlin (DE) and Vienna (AT) is an organ of the European Patent Organisation created by the EPC (Art. 4 EPC). The task of the European Patent Organisation is to grant European patents. This task has to be carried out by the European Patent Office.

According to Art. 14 EPC, the official languages of the European Patent Office are English, French and German. European patent applications must be filed in one of these languages. However, natural or legal persons having their residence or principal place of business within the territory of a Contracting State having a language other than English, French or German as an official language, and nationals of that State who are resident abroad, may file European patent applications in an official language of that State. Nevertheless, a translation in one of the official languages of the European Patent Office must be filed within the time limit prescribed in the Implementing Regulations; throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the original text of the application.

Boards of Appeal are installed within the EPO which are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions, Opposition Divisions and of the Legal Division. In general, there is no way to national courts or courts established by the EU.

By virtue of Art. 99, 100 EPC, within nine months from the publication of the mention of the grant of the European patent, any person may give notice to the European Patent Office of opposition to the European patent granted.

After the opposition period has lapsed and all opposition proceedings, if any, are terminated, the EPO has no longer any power to withdraw a European patent. Later on, pursuant to Art. 138 EPC, a European patent may only be revoked by a national court or other competent national authority under the law of a Contracting State, with effect for its territory, on the following grounds:

• If the subject-matter of the European patent is not patentable within the terms of general substantive Law of EPC (e.g. lack of novelty or lack of inventive step);
• if the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
• if the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application beyond the content of the earlier application as filed;
• if the protection conferred by the European patent has been extended; or
• if the proprietor of the European patent is not entitled.

If the grounds for revocation only affect the European patent in part, revocation is pronounced in the form of a corresponding limitation of the said patent. If the national law so allows, the limitation may be effected in the form of an amendment to the claims, the description or the drawings.

European Patents Grant

Art. 52 EPC stipulates that patents are granted for inventions that are new, involve an inventive step and are susceptible of industrial application. In particular the following matters are not regarded as patentable inventions:

• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
• presentations of information.

These provisions excluding said subject-matters from patentability actually do exclude patentability only to the extent to which protection is sought for the above-mentioned subject matter or activities as such.

Furthermore, methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are not regarded as inventions which are susceptible of industrial application. This provision does, however, not apply to products, in particular substances or compositions, for use in any of these methods, e.g. pharmaceuticals.

In addition, according to Art. 53 EPC, European patents are not granted in respect of:

• inventions the publication or exploitation of which would be contrary to ordre public or morality, provided that the exploitation is not to be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
• plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.

A European patent application may be filed

• at the European Patent Office at Munich or its branch at The Hague, or
• if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State. An application filed in this way has the same effect as if it had been filed on the same date at the European Patent Office.

However, the above-quoted provisions do not preclude the application of legislative or regulatory provisions which, in any Contracting State

• govern inventions which, owing to the nature of their subject-matter, may not be communicated abroad without the prior authorisation of the competent authorities of that State, or
• prescribe that each application is to be filed initially with a national authority or make direct filing with another authority subject to prior authorisation.

These optional restrictions are provided in view of national security considerations. Under the EPC no secret patents do exist. Some EPC Member States want to control the flow of potentially sensitive technological information to the EPO by installing a mandatory security inspection at the respective national Patent Office. Hence, for citizens or residents of certain EPC Member States (and, of course, also for residents of other countries having relevant legislation in this field) it would be a risk or even an offence to file a patent application directly with the EPO in Munich without prior allowance issued by the respective competent national authority.

Pursuant to Art. 65 EPC, any Contracting State may prescribe that if the text, in which the European Patent Office intends to grant a European patent or maintain a European patent as amended for that State, is not drawn up in one of its official languages, the applicant for or proprietor of the patent is obliged to 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. Any Contracting State which has adopted such translation provisions may prescribe that the applicant for or proprietor of the patent must pay all or part of the costs of publication of such translation within a period laid down by that State. In fact, at the time being, all EPC Member States have made use of these provisions of Art. 65 EPC resulting in that after having obtained a Decision to Grant, the applicant must undertake a lot of efforts in order to ensure that in every designated EPC Member State the respective national translation requirements are met in due time.

European Patents Renewal

According to Art. 86 EPC, renewal fees are to be paid to the European Patent Office in respect of European patent applications. These fees are due in respect of the third year and each subsequent year, calculated from the date of filing of the application. When a renewal fee has not been paid on or before the due date, the fee may be validly paid within six months of the said date, provided that the additional fee is paid at the same time. If the renewal fee and any additional fee have not been paid in due time the European patent application will be deemed to be withdrawn. The European Patent Office alone is competent to decide this.

The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published. Afterwards, renewal fees are to be paid in accordance with the applicable provisions of the respective national Law of the EPC Member Countries which have been designated for the European patent.

European Patents Oppositions

By virtue of Art. 99, 100 EPC, within nine months from the publication of the mention of the grant of the European patent, any person may give notice to the European Patent Office of opposition to the European patent granted. Notice of opposition must be filed in a written reasoned statement. It will not be deemed to have been filed until the opposition fee has been paid. Opposition may only be filed on the grounds that:

• the subject-matter of the European patent is not patentable within the general terms of substantive EPC Law (e.g. the subject-matter lacks novelty or inventive step);
• the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; or
• the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed beyond the content of the earlier application as filed.

In accordance with Art. 101, 102 EPC, if the opposition is admissible, the Opposition Division examines whether the grounds for opposition mentioned above prejudice the maintenance of the European patent:

• If the Opposition Division is of the opinion that the grounds for opposition prejudice the maintenance of the European patent, it revokes the patent.
• If the Opposition Division is of the opinion that the grounds for opposition do not prejudice the maintenance of the patent unamended, it rejects the opposition.
• If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of this Convention, it decides to maintain the patent as amended, provided that it is established, in accordance with the provisions of the Implementing Regulations, that the proprietor of the patent approves the text in which the Opposition Division intends to maintain the patent and that certain formalities are fulfilled.

Pursuant to Art. 68 EPC, the European patent application and the resulting patent are deemed not to have had, as from the outset, effects to the extent that the patent has been revoked in opposition proceedings. The right to priority is, however, not affected by the revocation.

EuroPCT: EPO acting as Designated Office

The European Patent Office can act as a designated Office within the meaning of the PCT for those Contracting States to this Convention in respect of which the Co-operation Treaty has entered into force and which are designated in the international application if the applicant informs the receiving Office in the international application that he wishes to obtain a European patent for these States. The same applies if, in the international application, the applicant designates a Contracting State of which the national law provides that designation of that State shall have the effect of the application being for a European patent.

When the European Patent Office acts as a designated Office, the Examining Division is competent to take decisions which are required under Article 25, paragraph 2(a), of the PCT.