An Overview of Patents in Europe
Guenther Marten
Minister Counsellor at the EU Delegation to China
The following article is intended to give an overview on patent protection in Europe and in the European Union. Rather than entering into details for patent filings, it gives an approach to the available systems. Having read the article, the reader should be able to understand the differences of the systems and to choose the one which it suits or which suits its client most.
A patent is a legal title granting its holder the right – in a particular country and for a certain period of time – to prevent third parties from exploiting an invention for commercial purposes without authorization. Thus, the patent is an intellectual property right (IPR) with a territorial scope of protection, valid in a certain country. Thus, a German patent registration is only protected in the territory of Germany. Furthermore, patent also prevents someone from practicing a method covered by a German patent both in Germany or practicing it abroad and bringing the product into Germany. However, a German patent will not prevent anyone from making, using, selling or manufacturing out of Germany as long as the product is not brought into Germany. Accordingly, if a patent owner desires protection in a particular foreign country, it is necessary to obtain a separate patent in that country. While there are various treaties to facilitate obtaining such patent, further detailed in this article, ultimately a patent granted is one that covers a particular country and separate patents must be obtained for every country in which protection is desired.
As to the novelty requirement, China foresees a six month's grace period. So long as the inventor can show that the invention is his before a disclosure took place, he can overcome such disclosure within the 6 month's grace period. The Patent Cooperation Treaty (PCT) also foresees a 6 month's grace period,1 whereas the US has a grace period of 12 months. However, most of the countries do not have any grace period. Thus, if a disclosure took place without having filed a patent application, the applicant may be prevented to be awarded with a patent grant in countries which do not provide for a grace period.
It was and continues to be possible to apply in each European country, or each country or region for that matter, for a certain patent before the national or regional patent office. As European countries moreover are engaged in a lot of trade, it appeared that the mere national patent situation was neither effective nor available for a reasonable amount of money. Each application had to be presented in the language of the national office, had to be processed individually by it and most often through a patent attorney. The applicants namely suffered from this situation. It was therefore only natural to look for proceedings which are more effective and less expensive for the patent applicants.
International patent
The PCT was concluded in 1970 and entered into force in 1978. It is administered by the World Intellectual Property Organization (WIPO) in Geneva/ Switzerland and has actually 152 Member States, spread across the globe. China adhered in January 1994. PCT provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. A single filing of a PCT application is made with a Receiving Office, i.e. the national patent office of a PCT Member State or the International Bureau of WIPO, in one language. It then results in a search performed by an International Searching Authority (ISA, most often EPO, Japan Patent Office or Korean Patent Office), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). This ends the international phase.
The relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of the patent certificate comprising the national phase. A PCT application does therefore not itself result in the grant of a patent, since there is no such thing as an "international patent". The PCT functions as a patent application filing system only. The grant of patent continues to be a prerogative of each national or regional (ASEAN, ARIPO etc.) authority. In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases to proceed towards grant of one or more patents. The PCT procedure essentially leads to standard national or regional patent application, which may be granted or rejected according to applicable law in each jurisdiction in which a patent is desired. The overwhelming majority of the patent applications is filed electronically only.
Always a question in patent matters is whether software is patentable. Under the EPC, a computer program claimed "as such" is not a patentable invention2. Patents are not granted merely for program listings. Program listings as such are protected by copyright. For a patent to be granted regarding a computer-implemented invention, a technical problem has to be solved in a novel and non-obvious manner. What follows is an overview of the PCT system, courtesy from WIPO:
European patent
At the same time where the PCT was negotiated, the European Patent Convention (EPC) took shape. It is managed by the European Patent Office (EPO) headquartered in Munich/Germany which received patent applications as from October 1977. Patents can be applied for in one of three languages (English, French or German). Currently, the patent applicant can choose to apply through the EPO for protection in 38 countries. The EPC members are not identical with European Union members; some non-EU countries including Switzerland, Liechtenstein, Turkey, Monaco and Iceland are EPC members. EPO centralizes examination in one language and defers the cost of translations until the time of grant. Same as for the patent granted through the PCT system, a "European Patent" for, say, 20 countries, means that the owner has essentially 20 independent patents. Relevant national-level procedures must be completed to make this EPC patent effective and enforceable in the EPC member states designated by the applicant. They may be revocable on the national level only.
European patent
At the same time where the PCT was negotiated, the European Patent Convention (EPC) took shape. It is managed by the European Patent Office (EPO) headquartered in Munich/Germany which received patent applications as from October 1977. Patents can be applied for in one of three languages (English, French or German). Currently, the patent applicant can choose to apply through the EPO for protection in 38 countries. The EPC members are not identical with European Union members; some non-EU countries including Switzerland, Liechtenstein, Turkey, Monaco and Iceland are EPC members. EPO centralizes examination in one language and defers the cost of translations until the time of grant. Same as for the patent granted through the PCT system, a "European Patent" for, say, 20 countries, means that the owner has essentially 20 independent patents. Relevant national-level procedures must be completed to make this EPC patent effective and enforceable in the EPC member states designated by the applicant. They may be revocable on the national level only.
If the examination concludes that an invention is new, involves an inventive step and is susceptible for industrial application, it is granted and then published for centralized opposition proceedings. The EPC requires all jurisdictions to give a European patent a term of 20 years from the filing date, the filing date being the actual date of filing an application for an European patent or the date of filing 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 provided in that national law to compensate for pre- marketing regulatory approval.
After an application is filed, the EPO will conduct a prior art search and provide the result to the applicant. Within 18 months starting from the filing date, the EPC patent application will be published. The prior art search report will also be published, either together with the publication of patent application or later on.
Within 6 months from the publication of the prior art search report, the applicant must confirm that it requests the substantial examination of the patent application. Within the same period, the applicant shall confirm the designated EPC countries where patent protection is desired by making relevant fee payment. After this phase, it will be impossible to change the designated EPC countries.
If the examiner agrees to the application, an EPC patent will be granted and a certificate thereof will be issued. The newly granted EPC patent will take effect starting from its publication in the European Patent Bulletin. However, the EPC patent itself is not automatically enforceable in the designated EPC member countries. Rather, a “validation” procedure in each of the designated countries is required. Said procedure, being made in line with the EPC, may differ from country to country and is subject to national law. Annual renewal fees need to be paid in each of the designated country to maintain the validity and enforceability of the patent rights in the respective countries.
After the European patent has been granted, it may be opposed by third parties3, usually the holder's competitors. The grounds mainly invoked are lack of novelty or failure to reach the inventive step threshold. Notice of opposition can only be filed within nine months of the patent grant published in the European Patent Bulletin. Notice of opposition is not deemed to have been filed until the opposition fee has been paid. The opposition can lead to maintenance which is in amended form or revocation of the European patent. Thus, the opposition is a central attack against the patent; if it is successful, the patent is revoked for all designated countries.
An appeal can be filed against decisions of the departments of first instance of the EPO. The appeal is filed with the EPO's Boards of appeal, which are independent in their decision making. The procedure is quasi-judicial in which a board acts as the department of final instance in grant, opposition, limitation and revocation procedures. An appeal must be filed in writing within two months of notification of the contested decision. It is not valid unless the appeal fee has been paid. Then, within four months from the date of notification of the decision, a written brief setting out the grounds of appeal must be filed. The above time limits are not extendable. Oral proceedings may be held at the request of the EPO or any party to the appeal. They are held in Munich and are public, unless otherwise specified. No judicial revision is foreseen.4
