Posted on Monday, December 1, 2008
by Charl Goussard, NAIP Legal Research
For even the most practiced professionals, the European Patent System is an extremely complex system. Yet for those who manage to navigate its complexities, a market of almost 500 million people (versus 300 million in the US) and an economy with an estimated GDP of $18.5.trillion for 2008 (versus $14.5 trillion in the US) awaits. As a result we will attempt to detangle this complex system in a series of articles targeted at businesses and companies who are interested in patents in Europe. We will begin with this brief introduction to the system and then follow up with more in-depth discussions on specific areas.
European Patent System: Historic Overview
In 1973 Belgium, West-Germany, France, Luxembourg, Netherlands, Switzerland, and the UK agreed to a multilateral treaty called the European Patent Convention (EPC). The purpose of the convention—as indicated by its previous name, "Convention of the Grant of European Patents" (and also sometimes referred to as the Munich Convention)—was to form a unified patent system in Europe.
The EPC lead to the establishment of the European Patent Office, and in 1978, the EPO received its first patent application. Currently, the Convention is in force in 34 countries and as of 1 January 2009, Macedonia will be the 35th member state.
Important to remember is that the EPC is not linked to the European Union (EU). The EPC consists of different member states. Croatia, Iceland, Liechtenstein, Monaco, Norway, Switzerland and Turkey are all EPC member states, but are not members of the EU.
Filing Options & Routes
Let us clear up another common misconception: no single patent provides protection across the whole of Europe. Each country grants and enforces its own patents. Consequently, obtaining patent protection in Europe means registering for patents individually in each desired territory. This method is commonly called the National Route.
Fortunately, if applying for patents in multiple European countries, a simpler option exists: the European Patent Office route. The European Patent Office grants the so-called "European Patent", which is nothing more than a simplified way of prosecuting patents in EPC member states. This "European Patent" may be enforced once it is validated in the individual countries designated during application.
Putting a discussion of the advantages and disadvantages of each route aside, the National Route is advisable if patent protection is needed in only one area. The EPO route is advisable if you wish to have a patent registered in more than one European country. In today's globalizing economies and markets, most businesses and inventors pursue protection in multiple countries. Consequently, this article will focus on the EPO route.
The European Patent: A Simplified Way of Prosecution
A reminder: don't be confused by the term "European Patent".
The term "European Patent" does not carry the same meaning as its equivalents in other countries like the US, Japan or China. European Patents were created to simplify the prosecution of patents for EPC member states. A European Patent is indeed prosecuted and granted. However, they are not enforceable unless they have been further validated by individual member states. Once validated, these "European Patents" become nothing more than National Patents which then must be enforced on a National basis.
Aside from this one major difference in function, the fundamental patent application process at the EPO is similar to the processes at most other patent offices: the application is searched, and then published; thereafter it is examined and then finally granted.
Patent applications may be filed at the EPO office in Munich or at one of its branches in The Hague or Berlin. Some National Offices may also accept EPO applications.
The Language Minefield / La langue des champs de mines/ Die Sprache Minenfeld
EPO applications may be filed in any of the official languages of the EPC member states, but the official languages for prosecution and communication are English, French and German. Thus, if an application is filed in any European language other than English, French, or German, a translation has to be filed at a later stage for prosecution purposes. Furthermore, the claims section of each European Patent has to be translated into all three official EPO languages.
At the national stage, however, patent claims must be translated into the official language of the member state. An applicant who has designated multiple countries would therefore have to translate the claims into the official language of each designated country.
To make things easier and more cost effective for applicants, several countries signed the London Agreement, which entered into force on 1 May 2008. These countries now accept claims in one of either English, French or German, although they retain the right to request a translation if desired. This and other changes has reduced translation costs considerably and made the European Patent application procedure more cost attractive and less time consuming.
Opposition and Revocation
Once a European Patent is granted, the EPC provides for centralized opposition, limitation, and revocation procedures. Within 9 months from grant, any third party may oppose such grant at the EPO. While the EPO hears the opposition, infringement litigation may be instituted on a national level in an EPC member state and national courts may decide to stay the proceedings pending the outcome of the EPO opposition procedure.
Currently there is no distinct, centrally enforceable patent or enforcing entity for the whole of Europe. European Patent enforcement of ownership, validity, and infringement is conducted on a country-by-country basis and only in the countries where the patent has been validated.
For a brief period in the 1990s some European Courts issued cross border injunctions—the so-called Pan-European relief—but this practice has been seized by an order from the European Court of Justice. It is thus not possible to get cross border enforcement of patents. Each needs to be individually enforced.
Because of the difficulty and costs of enforcements, most patentees have protection in only a selected number of EPC member states. The choice as where to instigate litigation is predominantly motivated by market factors, applicable judicial procedures, the language of the courts, and legal procedure in various member states.
The European Patent System has come a long way since its initiation in 1973. Much reform however, is planned to make this system even more efficient and cost effective.
On the minds of all concerned with the European Patent System is the possibility of a European Community Patent–a single patent covering all EPC contracting states–with centralized application, opposition, limitation, revocation and infringement procedures. Indeed an EPO work group that aims at a unified Patent Litigation System has drafted the European Patent Litigation Agreement consisting of proposals for a single European Patent Court, a European Patent Court of Appeals and Administrative Committee. Whether the EPC countries sign the agreement is another issue, but regardless of what happens, Europe remains a vital market because of its well developed systems for IP development, enforcement, and commercialization.