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Louis Ventre, Jr.

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EUROPEAN PATENT

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WHAT IS THE EUROPEAN PATENT SYSTEM

patent%20attorney%20star The Process. The European patent application process is a one-stop method for granting a patent applicable to 38 European countries (as of 01-FEB-2012) and extendable to 2 additional extension states after that date.

To be patentable in Europe, an invention in any field of technology must have an industrial application, must be new and involve an inventive step.  Not patentable are medical methods of treatment, surgery, or diagnosis.  But, the first use of a substance for a medical use is patentable.

When granted, the patent must be translated in an official language of each country in which the patentee wants patent protection within 3 months after publication of the patent grant (or six months for Ireland).  If the translation of the European patent is not provided to the national patent office within the prescribed time limit, the patent "shall be deemed to be void ab initio [from the start] in that State." (Article 65 EPC)

As of February 2012, there are 19 European countries that require the entire patent to be translated to complete the patent process in Europe. These are Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Estonia, Greece, Ireland, Italy, Malta, Montenegro, Norway, Poland, Portugal, Romania, Serbia, Slovakia, Spain and Turkey.

Claims have to be translated to one of their official languages if a European patent has been granted in English, or has been translated into English and filed under Article 65(1) EPC: Croatia, Denmark, Finland, Hungary, Iceland, the Netherlands and Sweden. Except for Croatia, the European patent specification can also be filed in these countries in the respective country's language.

The former Yugoslav Republic of Macedonia, Latvia, Lithuania and Slovenia only require a translation of the claims into their respective official languages, regardless of the official language in which the EPO has granted the patent.

patent%20attorney%20star London Agreement to Change Translation Requirements. The London Agreement took effect on May 1, 2008 and it alters the translation requirements for some of the European countries when EP patents issued after that date. A list of signatories may be found on the EPO web site.

When a European patent issues, the owner needs to take no action to make the grant effective in the following member states: United Kingdom, France, German, Switzerland, Luxembourg, Liechtenstein and Monaco. For these states and except when a patent is revoked or limited, a European patent takes effect as a national patent on the date on which the mention of the grant is published in the European Patent Bulletin. Thus, for an application filed in English, French or German, no translations will be required for the United Kingdom, France, German, Switzerland, Luxembourg, Liechtenstein and Monaco.

As of February 2012, there are 18 European countries that do not require a translation of the description unless an infringement action is brought in the state. These countries are signatories to London Agreement and include: Croatia, Denmark, Finland, the former Yugoslav Republic of Macedonia, France, Germany, Hungary, Iceland, Latvia, Lithuania, Liechtenstein, Luxembourg, Monaco, the Netherlands, Slovenia, Sweden, Switzerland and the United Kingdom.

Other countries of the EP may join the London Agreement, which is downloadable in pdf format from the EPO site.

patent%20attorney%20star European Patent with Unitary Effect (EUP). Beginning no sooner than 01-JAN-2014 (but probably a year or two later if 13 states have not acceded to the Agreement), up to 25 of the 27 European states will participate to offer a single patent right covering all those member states of the European Union that are participating in the new Agreement on a European Patent with Unitary Effect.

This right will not be not automatic but must be requested by the patentee. Within a month after a grant of a European Patent, the patentee will be able to file a request with the European Patent Office to register the European Patent as having Unitary Effect. The resulting European Patent with Unitary Effect will be maintained by payment of a single annual renewal fee to the European Patent Office.

If no such request for Unitary Effect is filed within one month of European Patent grant, the European Patent will continue as a bundle of ‘national’ patents to be validated in designated states as desired. Normal European Patent Validation will be required in any case in any designated states which are not participating states, particularly including designated states which are not members of the European Union.

Registration of a European Patent as a European Patent with Unitary Effect will be available only if the European Patent is granted with identical claims for all European Patent with Unitary Effect states. Italy and Spain are not participating in the European Patent with Unitary Effect and Switzerland and Norway, which are not members of the European Union, cannot participate.

A Unified Patent Court is to be set up to provide a single court forum to have (eventually) exclusive competence over all disputes relating to European Patents and in particular those with Unitary Effect. The Unified Patent Court will have a Court of First Instance and a Court of Appeal.

patent%20attorney%20star The Patent's Legal Coverage.A European patent confers on its owner from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.

  • Note that the granted patent may be enforced or revoked in the countries specified in the application in accordance with national laws of those countries.  Multiple litigation is costly but fostered when each nation must adjudicate independently.
  • Note also that anyone can file an "opposition" to the patent grant within nine months from the publication of the mention of the grant of the European patent.  This re-litigates the validity of the patent before the "Opposition Division" of the EPO and can result in its amendment, revocation or affirmation. Oppositions happen for about 6% of the patents.  Each party to an opposition proceeding bears the costs he has incurred.

patent%20attorney%20star Non-Patentable Subject Matter. The following are not patentable by the EPO: discoveries; scientific theories; mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games, doing business, and computer programs; presentations of information; methods for the medical treatment of animals and humans; diagnostic methods applied to animals and people; inventions contrary to public order or morality; plant or animal varieties; and biological processes for the production of plants or animals (except that microbiological processes or to the products thereof, are patentable).

patent%20attorney%20star Patentable Subject Matter. Inventions that don't fit into the categories above and have industrial application, are new and which involve an inventive step are patentable under the European Patent Convention.  Generally, the claimed subject matter must have a physical presence, that is a technical character, which is directly linked to a problem solved by the invention. See Article 52 of the EPC.

patent%20attorney%20star The Origin of the European Patent.  A European patent became an available option as a result of an agreement between participating European countries first reached in 1977.  The agreement is the European Patent Convention (EPC) and it enables the filing of a single application in or translated to one of three languages (English, French, or German).

patent%20attorney%20starThe Entity Involved. The European Patent Office (EPO) is a legal entity headquartered in Munich, Federal Republic of Germany.  The EPO is independent of the European Union and is administratively and financially autonomous.  The EPO's Receiving Section for applications is located at a branch office at The Hague.

patent%20attorney%20star Filing the European Patent Application. Patent application filings may be made either in the EPO or in one of the national offices, except that a resident of France must usually file in France.

patent%20attorney%20star Attorney Required. After the initial filing and payment of fees, an applicant from a country not a party to the EPC is required to have an attorney or agent licensed to practice before the EPO. The EPO publishes a searchable online database of authorized representatives.  Selecting an attorney that is also licensed in a European state where you want protection may help reduce local counsel costs after the patent grant when it comes time to locally file and publish a translation.

patent%20attorney%20star Unusual Filing Fees.  European filers be alert: The European Patent Office fee schedule (effective as of 12-JUN-2015) adds an extra charge of EUR 235 for each claim in excess of 15 through 50 claims and EUR 580 for each claim in excess of 50.  So, cost-conscious filers may want to pare down their claims to 15  before filing either an original application or a national stage PCT application.

The EP charges extra for more than 35 pages in an application, at a rate of EU14 per excess page.  Application pages that are considered in the total page calculation include the description, claims, drawings and abstract.

The EP charges a flat designation fee of EUR 580 (effective 12-JUN-2015 for designating more than one of the states that are part of the European Patent Convention.

patent%20attorney%20star The Search and Exam. The EPO performs the search and examination of the patent application and grants a patent.  The patent application and search report are published at 18 months from the filing or priority date. Then, upon request of the applicant within 6 months of publication of the search report and payment of an examination fee, the patent office examines the application for eligibility for a patent.

patent%20attorney%20star Patent Issuance. A patent grant becomes effective when published in the European Patent Bulletin and the owner receives a certificate for the European patent, with the specification annexed.

patent%20attorney%20star The Down Side. Translations, local counsel, and disparate enforcement standards can lead high costs and sometimes to enforceability in one country but not in others.

patent%20attorney%20star Costs. EPO costs are lower than filing in individual countries of Europe if more that 3 countries are selected.  Patent application renewal fees are due in the third year and each subsequent year, calculated from the date of filing of the application.   Persons not having either a residence or their principal place of business within the territory of one of the Contracting States must be represented by a professional representative and act through him in all proceedings.  Thereafter, local counsel is needed in each state where translations and publication fees must be paid.


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