WHAT IS THE EUROPEAN PATENT SYSTEM
 The Process. The
European patent application process is a one-stop method for granting a
patent applicable to 36
European countries (as of 01 July 2009) and extendable to 3 additional
extension states.
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)
London Agreement to Change Translation Requirements.
The London
Agreement is to take 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.
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 unless an infringement action is
brought in one of those countries and then the translation will be
required to the language of the state were the action is brought.
A translation of an application's claims may be required for
Iceland, Latvia, Netherlands, Croatia and Slovenia when the application is
in the stated preferred language (most have preferred English).
Sweden and Denmark each passed a law that requires translation of
claims to Swedish and Danish, respectively, but have not yet formally
ratified the Agreement.
Other countries of the EP may join the London Agreement, which is downloadable
in pdf format from the EPO site.
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.
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).
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.
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).
The 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.
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.
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.
Unusual Filing Fees. European filers
beware: The European Patent Office fee
schedule, effective April 1, 2009, adds an extra charge of EUR 200 for
each claim in excess of 15 through 50 claims and EUR 500 for each
claim in excess of 50 (see rows 15 & 16 on the fee schedule).
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.
Effective April 1, 2009, the EP charges extra for more than 35 pages in
an application, at a rate of EUR 12 per excess page. Application
pages that are considered in the total page calculation include the
description, claims, drawings and abstract.
Effective April 1, 2009, the EP will charge a flat designation fee of
EUR 500 for designating more than one of the states that are part of the
European Patent Convention.
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 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.
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.
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.
Home | How
to Communicate | Email to: lventre@lventre.com | Useful
Links
Client
Inventions | Bio | FAQs | Disclaimers
Search
Click Here to Fill-In a Web Form Email
© 2007 Louis Ventre, Jr.
This file last modified 06/11/09.
This page is http://www.lventre.com/epo.html. |
