European Patent Convention Substantially Revised

Substantial revisions to the European Patent Convention (EPC), the first in over 30 years, went into effect on December 13, 2007.  The EPC establishes the European Patent Organization, which consists of a European Patent Office (EPO) and a managing body called the Administrative Council. The task of granting European patents is carried out by the EPO, under the supervision of the Administrative Council.  The European Patent Organization is financed through the imposition of fees and through payments and special contributions by the Contracting States. The purpose of creating the European Patent Organization as a centralized system was to avoid the duplication of effort and improve the overall quality of the patent inspection.

Much of the substantive law in the EPC is based on the Strasbourg Convention, particularly as regards the subject matter of a patent application. Under the EPC, a European patent will be granted for any inventions, in all fields of technology, provided that they are new, involve an “inventive step,” and are susceptible to industrial application.  Excluded from the relevant definition are discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and presentations of information.  The EPC also provides that European patents will not be granted with respect to inventions the commercial exploitation of which would be contrary to “ordre public” or morality, provided that such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; plant or animal varieties or essentially biological processes for the production of plants or animals, however, this exclusion does not apply to microbiological processes or the products thereof; or methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, however, this exclusion does not apply to products, in particular substances or compositions, for use in any of these methods.

An invention is considered to be new if it does not form part of the state of the art and is considered as involving an inventive step if, after having regard to the state of the art, it is not obvious to a person skilled in the art.  An invention is considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.  The right to a European patent belongs to the inventor or his successor in title. If the inventor is an employee, the right to a European patent is determined in accordance with the law of the country in which the employee is mainly employed; if the country in which the employee is mainly employed cannot be determined, the law to be applied will be that of the country in which the employer has his the place of business to which the employee is attached.  If two or more persons have made an invention independently of each other, the right to a European patent therefor belongs to the person whose European patent application has the earliest date of filing, provided that this first application has been published.

An application for a European patent may be filed with the EPO, or branch office, or at the competent patent authority of a Member State, which will forward it to the EPO’s main office.  Under the recent revisions the application may be filed in one of the three official languages (i.e., English, French or German) or, if filed in any other language, translated into one of the official languages. Throughout the proceedings before the EPO, such translation may be brought into conformity with the application as filed. If a required translation is not filed in due time, the application will be deemed to be withdrawn.  An application for a European patent must contain the following:

  1. A request for the grant of a European patent on a special EPO form;
  2. A description of the invention;
  3. One or more claims;
  4. Any drawings referred to in the description or the claims; and
  5. An abstract.

Disclosures in the patent application must be sufficiently clear and complete to allow the invention to be carried out by a person skilled in the art.  Claims must be clear and concise and be supported by the description of the invention.  The abstract, preferably in not more than 150 words, serves mainly for use as technical information only and may not be taken into account for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought.

Applicants are allowed to request the grant of a European patent for one or more of the Contracting States and the application must contain the designation of the Contracting State(s) in which protection is sought.  Initially, Contracting States had to be positively designated in the request for grant; however, this practice caused problems since, in principle, a later designation made after the filing date of the European patent application was inadmissible.  In order to make the entire process more efficient, the EPC now provides that applicants are deemed to have designated all the Contracting States that are parties to the EPC at the time that the application is filed; however, applicants have the option of withdrawing designations and may do so at the outset, upon filing the application, if they so wish. 

Once the application has been filed, it is then subject to an examination and search procedure. The EPO will then decide whether to refuse or grant the European patent.  The EPO will publish the application as soon as possible (a) after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority, or (b) at the request of the applicant,  before the expiry of that period. The application will be published at the same time as the specification of the European patent when the decision to grant the patent becomes effective before the expiry of the period referred to in the previous sentence. Within nine months of the publication of the fact of the grant of the European patent in the European Patent Bulletin, any person can give notice of opposition to the patent so granted.

Once granted, the European patent takes effect as the equivalent of a national patent in all, or if requested, a designated number, of the Member States that adhere to the Convention. Any infringement of the European patent is thereafter dealt with by the national courts.  The term of the European patent is twenty years from the date of filing of the application.  Any Contracting State may, if the European patent as granted, amended or limited by the EPO is not drawn up in one of its official languages, prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted, amended or limited in one of its official languages at his option or, where that Contracting State has prescribed the use of one specific official language, in that language. The period for supplying the translation ends three months after the date on which the mention of the grant, maintenance in amended form, or limitation of the European patent is published in the European Patent Bulletin, unless the Contracting State concerned prescribes a longer period. The EPC, which allows an applicant to acquire a “bundle of rights” with obvious savings in costs and administrative time, has been quite successful, although the lack of a common appeal structure from decisions that are made by national courts regarding patent litigation can, in theory, lead to variations in the treatment of a European patent among Member States.

The content in this post has been adapted from material that will appear in Technology Management and Transactions (Fall 2008) and is presented with permission of Thomson/West.  Copyright 2008 Thomson/West.  For more information or to order call 1-800-762-5272.


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