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. Although the term European patent is used to refer to patents granted by the EPO, after grant such a patent is not a unitary right, but a group of essentially independent nationally-enforceable, nationally-revocable patents, subject to revocation and/or narrowing as a group pursuant a time-limited, unified, post-grant opposition procedure.^[1]

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] This latter provision is important in countries such as the United Kingdom, in which it is an offence for a UK resident to file a patent application for inventions in certain sensitive areas abroad without obtaining clearance through the UK Patent Office first.^[7]

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 and the prospect of a single EU-wide patent is receding.

Contracting States to the European Patent Convention, with respective date of entry into force

Date	Entry into force
7 October 1977	Belgium, Germany (then West Germany), France, Luxembourg, Netherlands, Switzerland, United Kingdom
1 May 1978	Sweden
1 December 1978	Italy
1 May 1979	Austria
1 April 1980	Liechtenstein
1 October 1986	Greece, Spain
1 January 1990	Denmark
1 December 1991	Monaco
1 January 1992	Portugal
1 August 1992	Ireland
1 March 1996	Finland
1 April 1998	Cyprus
1 November 2000	Turkey
1 July 2002	Bulgaria, Czech Republic, Estonia, Slovakia
1 December 2002	Slovenia
1 January 2003	Hungary
1 March 2003	Romania
1 March 2004	Poland
1 November 2004	Iceland
1 December 2004	Lithuania
1 July 2005	Latvia
1 March 2007	Malta

States with an extension agreement with the European Patent Office, with respective date of entry into force

Date	Entry into force
1 February 1996	Albania
1 November 1997	Republic of Macedonia
1 April 2004	Croatia
1 November 2004	Serbia
1 December 2004	Bosnia and Herzegovina

Contents 1 Background and rationale 2 History 3 Content 4 Substantive patent law 5 Unified prosecution phase 6 Opposition 7 Grant, effect and need for translations 8 Enforcement and validity 9 Notes 10 References 11 See also 12 External links

[edit] 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.

[edit] History

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, and its membership is different; Switzerland, Liechtenstein, Turkey, Monaco, and Iceland are members of the EPO but are not members of the EU. The Convention is now (as of March 2007) in force in 32 countries.^[8]

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. The following 5 states have concluded extension agreements with the EPO, so that in effect, these states can be designated as well in a European patent application: Albania, Bosnia and Herzegovina, Croatia, Former Yugoslav Republic of Macedonia, and Serbia and Montenegro (formerly known as the Federal Republic of Yugoslavia).

Norway was among the original signatories, but never ratified the EPC, due to political controversies over biotechnological patents. Recently, the Norwegian government has indicated that Norway intends to acceed to the EPC, with a target date of January 1, 2008. ^{[9] [10]}

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, especially those of the TRIPs Agreement and of the Patent Law Treaty, and to add a level of judicial review of the Boards of Appeal decisions. The revised text, called the EPC 2000, will enter into force on December 13, 2007 at the latest.^[11]

As a potential future development, the London Agreement aims to further reduce the burden of translation by limiting the number of translations required. However, that agreement has not yet entered into force.

[edit] Content

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,^[12] are

• the "Implementing Regulations to the Convention on the Grant of European patents", commonly known as the "Implementing Regulations";
• the "Protocol on Jurisdiction and the recognition of decisions in respect of the right to the grant of a European patent", commonly known as the "Protocol on Recognition". This protocol deals with the right to the grant of a European patent but exclusively applies to European patent applications.
• the "Protocol on Privileges and Immunities of the European Patent Organisation", commonly known as the "Protocol on Privileges and Immunities";
• the "Protocol on the Centralisation of the European Patent System and on its Introduction", commonly known as the "Protocol on Centralisation";
• the "Protocol on the Interpretation of Article 69 of the Convention".

[edit] Substantive patent law

One of the most important articles of the Convention, Article 52(1) EPC, entitled "Patentable inventions", states:

"European patents shall be granted for

• any inventions
• which are susceptible of industrial application,
• which are new,^[13] and
• which involve an inventive step".

This article constitutes the basic, central patentability provision under the EPC.

However, the EPC provides further indications on what is patentable, by introducing exceptions. There are exceptions by virtue of the nature of the patent system (Article 52(2) and (3)) and exceptions by virtue of policy (Articles 52(4) and 53).

First, discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers and presentations of information are not regarded as inventions and are excluded from patentability only to the extent that the invention relates to those areas as such. These exceptions, by virtue of the nature of the patent system, have been introduced as a way to illustrate what cannot be patentable due to the nature of the patent system, i.e. a patentable subject-matter should usually be directed to some physical product or process. The European Patent Office interprets this as requiring that the features providing the inventive step must be outside those areas.

The second set of exceptions, the exceptions by virtue of policy, include

• methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body,^[14]
• inventions contrary to "ordre public" or morality^[15] and
• plant or animal varieties and essentially biological processes for the production of plants an animals.^[16]

The EPO is reluctant to use the public policy exceptions as it believes that this is best left to national law - being granted a patent should not be viewed as an endorsement of one's commercial plans.

[edit] Unified prosecution phase

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), 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."^[17] An applicant for a European patent designates those Contracting States in which protection for the invention is desired,^[18] and the designations need to be "confirmed" later during the procedure through the payment of designation fees.^[19] Once granted by the EPO,^[20] a European patent comes into existence effectively as a group of national patents in each of the designated Contracting States.

An EPO Board of Appeal is not bound by its own previous decisions or decisions of other Boards, so conflicting decisions can arise. Conflicting decisions may be decided by an Enlarged Board decision, but this often takes several years.

[edit] Opposition

Main article: Opposition procedure before the European Patent Office

The only centrally executed procedure after grant is the opposition procedure, governed by the EPC, which allows third parties to file an opposition against a European patent within 9 months of the date of grant of that patent.^[21] It is a quasi-judicial process, subject to appeal, which can lead to maintenance, maintenance in amended form or revocation of a European patent. It is possible that a European patent will 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.

[edit] 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.^[22] In other words, one European patent in one Contracting State^[23] 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.^[24] That is also the date of publication of the B1 document, i.e. the European patent specification.^[25] 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".^[26] 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.^[27] In other Contracting States, no translation needs to be filed, for example in the UK and Ireland if the European patent is in English. Luxembourg and Monaco do not require any translation no matter the language in which the European patent is drawn up.^[28] If a translation is required, a fee covering the publication of said translation may be due as well.^[29]

[edit] Enforcement and validity

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 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.^[30] Thus, almost all post-grant proceedings - including renewal, revocation, and infringement enforcement are determined under national law.

Infringement is remitted almost entirely to national law and to national courts.^[31] 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.^[32] 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.^[33] A protocol to Article 69 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.^[34] The authentic text of a European patent application and of a European patent are the documents in the language of the proceedings.^[35][36]

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.^[37]

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.^[38]

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:

• if the subject-matter of the European patent is not patentable within the terms of Articles 52 to 57 EPC (see "Substantive patent law" section above)
• if the disclosure does not permit the invention to be carried out by a person skilled in the art^[39]
• if amendments have been made such that the subject-matter extends beyond the content of the application as filed^[40]
• if the claims have been broadened post-grant, e.g. in opposition proceedings^[41]
• an improper proprietor^[42]

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,^[43] 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.^[44] For EEA member states this is by means of a supplementary protection certificate.

[edit] Notes

[edit] References

• 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
• Singer & Stauder, The European Patent Convention - A Commentary, Sweet & Maxwell, 2003, ISBN 0-421-83150-2
• Derk Visser, The Annotated European Patent Convention, H. Tel, Publisher, updated yearly [2]
• Jelle Hoekstra, References to the EPC, Hoekstra Document Services, updated yearly [3]
• Stephan C. Fritz, Elisabeth K. Grünbeck, Ali Hijazi, Key to the EPC, Verlag E. Grünbeck, ISBN-13: 978-3-9809980-7-9 [4]
• Peter Watchorn and Andrea Veronese, "PCT Procedures and Passage into the European Phase", Kastner AG, 2006, "ISBN-13: 978-3-937082-56-1", [5]

[edit] See also

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

• European patent law
• Strasbourg Convention (1963)
• Agreement dated 17 October 2000 on the application of Article 65 EPC or London Agreement
• European Patent Litigation Agreement (EPLA)
• Vienna Convention on the Law of Treaties (1969) - although the Vienna Convention entered into force on January 27, 1980, i.e. after the entry into force of the EPC, according to the case law of the Boards of Appeal, it may be used to interpret the EPC.

See also "European Patent Organisation" box below.

[edit] External links

• Text of the European Patent Convention
• Ancillary Regulations to the European Patent Convention (or pdf version)
• Official Journal of the EPO
• Case Law of the Boards of Appeal of the EPO
• Guidelines for Examination in the EPO
• National law regarding to the EPC
• Guide for applicants (European patent applications)
• Guide for applicants (Euro-PCT applications)

v • d • e European Patent Organisation

Founding text : European Patent Convention (EPC) (revised text: EPC 2000) Procedural steps : Grant procedure | Opposition | Appeal Other topics : epoline | European Patent Bulletin | Register of European Patents | Official Journal of the European Patent Office (EPO) | Representation before the EPO | Software patents under the EPC EPC Contracting States : Austria | Belgium | Bulgaria | Cyprus | Czech Republic | Denmark | Estonia | Finland | France | Germany | Greece | Hungary | Iceland | Ireland | Italy | Latvia | Liechtenstein | Lithuania | Luxembourg | Malta | Monaco | Netherlands | Poland | Portugal | Romania | Slovakia | Slovenia | Spain | Sweden | Switzerland | Turkey | United Kingdom Extension States: Albania | Bosnia and Herzegovina | Croatia | Former Yugoslav Republic of Macedonia | Serbia