European patent law

Last updated April 14, 2024

European patent law covers a range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations. For some states in Eastern Europe, the Eurasian Patent Convention applies.

Patents having effect in most European states may be obtained either nationally, via national patent offices, or via a centralised patent prosecution process at the European Patent Office (EPO). The EPO is a public international organisation established by the European Patent Convention (EPC). The EPO is neither a European Union nor a Council of Europe institution.^[1] A patent granted by the EPO does not lead to a single European patent enforceable before one single court, but rather to a bundle of essentially independent national European patents enforceable before national courts according to different national legislations and procedures.^[2] Similarly, Eurasian patents are granted by the Eurasian Patent Office and become after grant independent national Eurasian patents enforceable before national courts.

European patent law is also shaped by international agreements such as the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), the Patent Law Treaty (PLT) and the London Agreement.

Types of patent protection in Europe

Regional patent convention membership in Europe
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Parties to the European Patent Convention
Extension states by the European Patent Convention
Parties to the Eurasian Patent Convention
Other European States EUpatentlaw.svg — Regional patent convention membership in Europe
  Parties to the European Patent Convention
  Extension states by the European Patent Convention
  Parties to the Eurasian Patent Convention
  Other European States

A characteristic of European patent law as it stands today is that European patents granted by the European Patent Office (EPO), and patents granted by national patent offices are available,^[3] and may possibly –if permitted by national law and, if so, to the extent permitted by national law^[4]– co-exist within a given jurisdiction. Utility models, referred to as " Gebrauchsmuster " in Germany and Austria, are available in some countries.

Patent applications can be filed at the relevant national patent office or at the EPO. Alternatively, an international application may be filed under the Patent Cooperation Treaty (PCT) and later nationalised in the desired countries or at the EPO. However, Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands, and Slovenia have "closed their national route" meaning that it is no longer possible to nationalise an international application in those countries directly and protection can only be obtained via the EPO.^[5]^[6]

European patents

A European patent is the product of a unified grant procedure before the EPO under procedures established by the European Patent Convention (EPC). Before grant, a European patent application is a unitary legal entity. However, after grant, a "European patent" essentially ceases to have unitary character.

Some of the 39 EPC contracting states require the patentee to file a full translation of the granted European patent with the national patent office of the state if the text of the European patent as granted is not in one of their official languages. If the translation is not filed, the European patent is deemed to have no effect from the outset in that state.^[7] The London Agreement, which entered into force on May 1, 2008, significantly reduces the number of required translations in the states that are party to it.

A central time-limited opposition procedure and central limitation and revocation procedures before the EPO are available however. The opposition procedure allows any person except for the patent proprietor to oppose a granted European patent in an attempt to have the EPO revoke or amend the patent. The opposition procedure may only be initiated within nine months of the grant of the European patent.^[8] The limitation and revocation procedures allow the patentee to centrally request the limitation or revocation of their own European patent.

After the unitary European examination and opposition phase ends, nearly all "unitary" nature of the European patent dissolves, and what remains is a collection of essentially-independent national patents, and ownership, validity and infringement of each being determined independently under respective national law. Article 64(1) EPC provides that, in each member country, the national part of the European patent has the identical effect as a national patent with the identical claims would have. The European Patent Convention expressly adopts national law for all substantive attributes of a national part of a European patent, with the following exceptions:

standards for revocation - national law is expressly preempted, and grounds for revoking a national part are limited to five grounds specified in Article 138(1) EPC (subject matter, enabling disclosure, and claims beyond the content of the application as filed, protection has been extended or improper proprietor) - though each state is free to interpret the five grounds of Art. 138 under its own national law
infringement by the direct product of a patented process^[9]
patent term, 20 years from the filing date^[10]

All other substantive attributes of each national part of an EP patent, 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, what remedies are available for infringement or bad faith enforcement (injunction, damages, attorney fees, other civil penalties for willful infringement, etc.), equitable defenses, coexistence of an EP national part 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.^[11]

Eurasian patents

Eurasian patents are granted under the Eurasian Patent Convention in a system which is similar to the European Patent Convention: after a unitary grant procedure the patent becomes a national patent in each of the 8 member states.

Unitary patents

Countries may create unitary protection with regards to patents, which means that the effect (including revocation) is equal in all countries concerned. Such unitary protection was effected (both for "national" and European patents) by Switzerland and Liechtenstein in 1980 with the Treaty between the Swiss Confederation and the Principality of Liechtenstein on Patent Protection of 1978.^[12]

National patents

National patents are available in all European countries, except the Holy See. In some European countries, national patents are substantively examined, while in other countries there is no provision for such examination and patents are thus granted if formal requirements are met, while novelty and inventive step is not evaluated. It can be cheaper and tactically advantageous to apply for a few national patents rather than for a European patent at the European Patent Office.^[13]

In the United Kingdom, for example, the Patents Act 1977 and the Patents Act 2004 establish the law relating to patents including filing, examination, grant, infringement, revocation, assignment. UK law is in many ways similar to the European Patent Convention (EPC) (although the EPC deals with very few post-grant activities). UK patents law also applies in the Isle of Man, while in certain dependent territories and crown dependencies, European patents can be registered. In Europe this is the case for Gibraltar (within 5 years of grant), Guernsey (at any time during the patent lifetime) and Jersey (within 3 years of grant).^[14]

National patents may be the only available patents in European states that are neither party to the European Patent Convention nor the Eurasian Patent Convention. This is the case for Andorra and Ukraine (which signed but did not ratify the Eurasian Patent Convention). Moldova (a former party to the Eurasian Patent Convention), Montenegro, and Bosnia and Herzegovina are extension states to the European Patent Convention, which means that European patents granted are deemed to take effect also in these states, if extension is correctly requested; and provided certain translation and publication requirements are met.

Utility models

In Europe, utility models are available in Austria ( Gebrauchsmuster ), France ("certificat d'utilité"), Germany ("Gebrauchsmuster"), Italy ("modello di utilità"), Finland ("hyödyllisyysmalli"), Denmark ("brugsmodel"), Russia ("Полезная модель") and Spain ^[15] (this list is however non-exhaustive). The term of a utility model is usually shorter than the term of a patent and has less stringent patentability requirements.

Differences and similarities between national laws

Substantive patent law has been harmonized to a certain extent across national laws in Europe, notably upon signature of the Strasbourg Convention of 1963 and the European Patent Convention (EPC) of 1973, and upon entry into force of the TRIPs Agreement. In practice however, the interpretation of common substantive provisions have led to different interpretations in different European countries.

Regarding procedural law, and especially regarding the procedures to examine infringement and validity of patents before national courts, significant differences exist across national laws. For instance, while in Germany validity and infringement of patents are examined by different courts in different procedures (in a so-called "bifurcation system"), in the United Kingdom the same court is in charge of examining validity and infringement actions. According to Mr Justice Kitchin, a British judge,

"... it is desirable to try infringement and validity issues together, where at all possible. If they are tried separately it is all too easy for the patentee to argue for a narrow interpretation of his claim when defending it but an expansive interpretation when asserting infringement."^[16]

In other words, the German bifurcation system is often regarded as favouring the patentee.^[17] In this respect, Lord Justice Jacob referred to a comparison reportedly made by Professor Mario Franzosi between a patentee and an Angora cat:

"When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze."^[18]

The German patent system is, however, "particularly appealing for a large number of users", notably because it is regarded as relatively quick and affordable. The bifurcation character of the Germany system "is considered as both a shortcoming in some respects, and as an advantage in others."^[19]

Unitary patents in the European Union

The creation of a European community patent system, which would lead to a single unitary patent in the European Union (or its predecessor the European Community), has been debated since the 1970s. In 2012 agreement was reached between all European Union Member States except Italy and Spain on a European patent with unitary effect, more commonly known as the unitary patent, a proposed new type of patent that would be valid in participating member states of the European Union.^{[notes 1]} Unitary effect can be registered for a European patent upon grant, replacing validation of the European patent in the individual countries concerned. The unitary effect means a single renewal fee, a single (group of) owner(s), a single object of property, and uniform protection, which means that revocation as well as infringement proceedings are to be decided for the unitary patent as a whole rather than for each country individually. Licensing is however to remain possible for individual countries.

Agreement on the two EU regulations^[20]^[21] which make the unitary patent possible was reached during the European Council of 28–29 June 2012, and by the European Parliament on 11 December 2012.^[22] The provisions, i.e. the Unitary Patent Regulation and the Translation Regulation, apply since June 1, 2023, the date of entry into force of the related Agreement on a Unified Patent Court.

Other legal agreements have been proposed outside the European Union legal framework to reduce the cost of translation (of European patents when granted) and litigation, namely the London Agreement (which entered into force in 2008) and the European Patent Litigation Agreement (EPLA) (which never entered into force).

Statistics

Based on data from Germany, France, the Netherlands, and the UK, the Centre for European Economic Research (ZEW) found that German courts handle by far the largest number of patent litigation cases.^[23]

Notes

↑ All EU member states except Italy and Spain, which abstained due to the exclusive use of English, French, and German languages, and Croatia, which subsequently acceded to the EU, joined the unitary patent regulation. States will only participate in the unitary patent if they ratify the UPC Agreement.

Related Research Articles

The European patent with unitary effect, also known as the unitary patent, is a European patent which benefits from unitary effect in the 17 participating member states of the European Union. Unitary effect may be requested by the proprietor within one month of grant of a European patent, replacing validation of the European patent in the individual countries concerned. Infringement and revocation proceedings are conducted before the Unified Patent Court (UPC), which decisions have a uniform effect for the unitary patent in the participating member states as a whole rather than in each country individually. The unitary patent may be only limited, transferred or revoked, or lapse, in respect of all the participating Member States. Licensing is however possible for part of the unitary territory. The unitary patent may coexist with nationally enforceable patents in the non-participating states. The unitary patent's stated aims are to make access to the patent system "easier, less costly and legally secure within the European Union" and "the creation of uniform patent protection throughout the Union".

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, 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, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, 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.

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.

In a patent or patent application, the claims define in technical terms the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

The London Agreement, formally the Agreement on the application of Article 65 of the Convention on the Grant of European Patents and sometimes referred to as the London Protocol, is a patent law agreement concluded in London on 17 October 2000 and aimed at reducing the translation costs of European patents granted under the European Patent Convention (EPC). The London Agreement is an agreement between some member states of the European Patent Organisation, and has not altered other language requirements applying to European patent applications prior to grant.

The draft European Patent Litigation Agreement (EPLA), or formally the Draft Agreement on the establishment of a European patent litigation system, was a proposed patent law agreement aimed at creating an "optional protocol to the European Patent Convention (EPC) which would commit its signatory states to an integrated judicial system, including uniform rules of procedure and a common appeal court". It differed from the Unified Patent Court Agreement in that the EPLA negotiations were coordinated from the side of the European Patent Office, rather than from the European Council and Commission and therefore also offered the possibility for non-EU states to participate.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. is a decision by the House of Lords of England and Wales. The judgment was issued on 21 October 2004 and relates to the scope to be accorded to patent claims, including the doctrine of equivalents. The case and subsequent judgment affirmed principles from a prior case, Catnic Components Ltd. v. Hill & Smith Ltd.

European patents are granted by the European Patent Office (EPO) under the legal provisions of the European Patent Convention (EPC). However, European patents are enforced at a national level, i.e. on a per-country basis, or, since June 1, 2023, before the Unified Patent Court (UPC). Under Article 64(3) EPC, "any infringement of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the Contracting States to the EPC. A few, limited aspects relating to the infringement of European patents are however prescribed in the EPC.

European patent law is characterized by the coexistence of

national patent systems, and thus national patent offices and national courts;
a European patent system associated with the European Patent Convention (EPC), in the context of which the European Patent Office (EPO) grants European patents through a central examination procedure;
a Eurasian patent system associated with the Eurasian Patent Convention (EAPC), in the context of which the Eurasian Patent Office (EAPO) grants Eurasian patents through a central examination procedure; and
a Unified Patent Court (UPC) competent for the member states of the Unified Patent Court Agreement (UPCA).

Patent law in modern mainland China began with the promulgation of the Patent Law of the People's Republic of China, in 1984. This law was modeled after patent systems of other civil law countries, particularly Germany and Japan.

German patent law is mainly governed by the Patents Act and the European Patent Convention (EPC).

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

References

↑ "Member states of the European Patent Organisation". www.epo.org. European Patent Office. Retrieved 15 November 2022.
↑ (in French) "Prise de position des Avocats Généraux présentée le 2 juillet 2010", Opinion 1/09, Court of Justice of the European Union, July 2, 2010, point 4.
↑ Ingo Beckedorf (8–9 November 2012). EPO boards of appeal and key decisions: The future of the boards in the light of the possible introduction of the unitary patent and Unified Patent Court (Part 3 of 3). Munich, Germany: European Patent Office. 0:20 to 2:55 minutes in. Retrieved November 16, 2013.
↑ Article 139(3) EPC
↑ "European Patent Office web site, Accession to the PCT by Malta (MT), Information from the European Patent Office, January 2, 2007
↑ Latvia: Closing of the National Route via the PCT, PCT Newsletter of April 2007.
↑ Article 65(3) EPC
↑ Article 99 EPC
↑ Article 64(2) EPC
↑ Article 63(1) EPC
↑ Article 2 EPC - EPC Art. 2(2) "The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise."; Article 63(2) EPC (patent term extension determined under national law); Article 64(1) and (3) EPC (EP patent conveys "same rights" as national patent, and infringement determined by national law; Article 66 EPC (EP filing has same effect as national filing); Article 74 EPC (ownership determined under national law)
↑ "Treaty between the Swiss Confederation and the Principality of Liechtenstein on Patent Protection (Patent Treaty) of 22 December 1978]" (PDF). OJ EPO. 1980. p. 407. Archived from the original (PDF) on 28 March 2014. Retrieved 19 April 2014.
↑ Bossung, Otto. "The Return of European Patent Law in the European Union". IIC. 27 (3/1996). Archived from the original on March 4, 2012. Retrieved June 30, 2012. It can be cheaper to acquire national patent protection in a few selected partial markets in Europe, and may even offer a number of tactical advantages to the patent holder (deferment of examination, variability of patent claims for registration patents, or incontestability by means of opposition).
↑ "Registration of European patents (UK) in crown dependencies, UK overseas territories and Commonwealth countries" (PDF). Official Journal EPO (A97): 1–2. 2018. Retrieved 3 August 2021.
↑ "Utility models". National Board of Patents and Registration of Finland. 2012-05-24. Retrieved June 30, 2012.
↑ Mr Justice Kitchin, European Central Bank v Document Security Systems Inc. [2007] EWHC 600 (Pat) (26 March 2007), 88.
↑ "How to develop a winning strategy". worldipreview.com. 1 August 2012. Retrieved April 19, 2014.
↑ Lord Justice Jacob, European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192 (19 March 2008), 5.
↑ Harhoff, D. (2009). "Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System. Final Report to the European Commission" (PDF). ec.europa.eu. p. 13. Retrieved April 19, 2014.
↑ EU Regulations 1257/2012 and 1260/2012
↑ "Proposal for a Council regulation: implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements" (PDF). European Commission. 13 April 2011. Retrieved 29 June 2012.
↑ "Parliament approves EU unitary patent rules". European Parliament. 11 December 2012. Archived from the original on 16 December 2012. Retrieved 11 December 2012.
↑ Katrin Cremers; Max Ernicke; Fabian Gaessler; Dietmar Harhoff; Christian Helmers; Luke McDonagh; Paula Schliessler & Nicolas van Zeebroeck (September 2013). "Patent Litigation in Europe, Discussion Paper No. 13-072" (PDF). Centre for European Economic Research (ZEW). Retrieved October 2, 2013.