European Patents

Table of Contents

European Patent Convention

European Patent Convention 1973 has been ratified by almost 40 states. This includes members of the European Union and some other European countries.

The European Patent Convention provides for a single patent application granting patent rights across states that are party to the Convention. There is a European Patent Office. Single filing in the office may lead to a European Patent.

Technically the European Patent comprises a set of national patents. Therefore a European Patent in Ireland is deemed to have the same effect as an Irish patent. Enforcement takes place by domestic law.

The Patent Law Treaty 2000 provides for harmonised standards in relation to filing. The European Patent Convention 2000 updated the original convention.

Claiming Patent

A patent may be filed by any corporate body or person. The inventor or successor is generally entitled to the patent. Where the inventor acts in the course of employment, it may belong to the employer in accordance with national law.

In order to qualify for patentability under the European Patent Convention, the invention must be susceptible of industrial application, be novel and involve an inventive step. Novelty is measured against the state of the art. The state-of-the-art is everything available publicly anywhere in the world prior to the filing date.

There are provisions for non-prejudicial disclosures which do not invalidate patentability, where the disclosure is the result of an abuse (such as breach of confidentiality)or display at a recognised international exhibition.

Not Patentable

The following may not be patented

discoveries
scientific theories
mathematical method
presentation of information
procedure for surgical or therapeutic treatment, or diagnosis, to be practised on humans or animals.
schemes, rules and methods for performing mental acts playing games or doing business or computer programs

If a computer program creates a further technical effect beyond the operation of the program, they may be part of what qualifies for a patent.

Plant and Animals

Plant and animal varieties and biological processes for their production are not patentable. Microbiological processes and products are potentially patentable. This includes viruses and bacteria.

Plant varieties are subject to a separate scheme of protection. Animal varieties are not patentable.

Patents may be refused in respect of inventions whose use would be contrary to public order and morality. This does not apply only because it is prohibited in the state concerned.

Plant or animal varieties are essentially biological processes for the production of plants and animals (other than microbiological processes or other products) and may not be patented. Methods for the treatment of human and animals by surgery, therapy and diagnostic methods on the human body or animal body may not be patented. Products for use in such processes may be patented.

Patent Office & Filing

The European Patent Office is based in Munich and has branch offices in The Hague, Vienna and Berlin. Applications may be filed at the principal or branch offices or in national offices.

The patent application may be filed in any language but must also be filed with the translation into one of the three working languages of the office, English, French or German.

Fees are payable in relation to the application at various stages. The failure to pay the fees when due may invalidate the process and patent protection.

Procedure

After filing of the application, a search may be made in relation to the novelty of the invention relative to the state-of-the-art. The extended European search report utilises set classifications. It comments on the novelty and the inventive step claimed in the patent application.

A copy of the search results must be filed with the European Patent Office before the commencement of the examination or within a certain period thereafter. The EPO may require other national searches.

18 months after filing, the patent application is published. It contains a description of the subject matter of the patent claimed, the abstract and the drawings filed. The result of the search is also published. Earlier publication may be sought if required. The application may be withdrawn so that it is not therefore published.

After publication, third parties may make observations on the patentability of the claimed invention. They have no further right to participate in the process, although they may examine the public file.

An examination takes place during which the examiner determines whether the invention meets the requirements for patentability, including in particular, whether it is novel and whether there is an inventive step. The applicant is invited to make observations. Amendments may be made to the application of foot of the process.

Grant

If the examiner determines to grant the patent, it furnishes the proposed terms of the patent grant. The applicant may approve the proposed grant or seek amended terms.

The patent is effective when published in the European Patent Bulletin within 90 days of its grant; it must be validated in the states named in the application.
Following the grant, there is a nine-month period in which persons may file a notice of opposition.

Opposition may be based on the grounds of patentability, insufficient disclosure, publication or exploitation contrary to public order or morality, or the patent exceeds the scope of the application. The opposition is considered by the European patent office may seek observations.

There may be amendments to the patent during the process. The claims may not be extended in scope. Third parties may intervene if they can show that the infringement proceedings have commenced.

Appeal

There is an appeal to the European patent office Board of Appeal in respect of the refusal of a patent and opposition proceedings. There is a procedure for petitioning for review to an enlarged Board of Appeal in relation to certain types of objections.

The admissibility of the appeal is first considered. Procedural steps follow between the parties and a hearing may be held. A decision is then made on foot of the proceedings.

Reinstatement

There are a number of mechanisms to reinstate applications that have missed deadlines, such as for fees. There are procedures for taking steps so as to preserve and reinstate rights.

.It allows for reinstatement of rights within a certain period after notification of loss. There is a further procedure for re-establishment of rights when deadlines are missed due care being taken.

Post Grant

Patents must be translated into the two other official languages of the European Patent Office. When the patent is filed in national offices, a translation may be required.

Under a further agreement effective in 2012, several states no longer require a translation. Others may require the patent claims only rather than the full patent, to be translated into the national language.,

The European patent is valid for 20 years from the date of filing. States may extend patents on the same terms as national patents in certain very limited circumstances.

Annual renewal fees are paid to the European Patent Office in respect of applications from the third year and annually thereafter under the grant. After a national grant, these are payable in the relevant countries in order to keep the patent in force.

A European patent may be dealt with in the same way as other patents. Assignments of the application must be in writing and registered with the EPO. Assignments of the patent itself are undertaken in accordance with national law.

Unitary Patent

The Community Patent Convention provide for a single EU-wide patent. However, the Convention was not ratified by all EU states. It was passed in Ireland by Constitutional amendment in 1992.

The Convention proposed that a European Patent would be granted by the European Patent Office, which would have an automatic effect as a Community Patent. After years of impasse, the European Union adopted Regulations in 2012 and 2013 on the Unitary Patent and Unified Patent Court. It is open to members who have joined to ratify the agreement.

The patent would operate outside of European Union law by reason of not being ratified by all states. A European Patent granted by the EPO under the European Patent Convention would apply to all states.

There is provision for preliminary references from national courts to the Unified Patent Court in the same way as references to the Court of Justice of the European Union. The European Court could request rulings from the CJEU on preliminary matters.

Once granted, no further translations would be required. Facilities are proposed for access to machine-translated patent materials.

The Unified Patent Court has central divisions and regional divisions. Local and regional divisions deal with infringement matters as well as pre-trial protective measures.The central division deals with revocation actions and declarations in relation to infringement.

Process

The application for a European patent designating the State is to be treated as an application for a domestic Irish patent. The provisions generally of the Irish patent legislation apply with modifications. Under certain circumstances, applications for a European Patent Convention patent may continue as an application for an Irish patent.

The proprietor of a European patent designating the State shall, accordingly, as respect, the State have the same rights and remedies and be subject to the same conditions as the proprietor of a domestic Irish patent.

Where a European patent designating the State is amended, limited or revoked in accordance with the European Patent Convention, the amendment is treated for as if it had been made or where appropriate, as having been revoked for the purposes of domestic patent legislation.

The High Court has the power to determine certain prescribed types of questions in relation to rights to a European patent. In other cases where the application proceedings must be brought in another court, the High Court is to stay proceedings.

Generally, decisions of other courts in relation to European patents are recognised in the State. There are some grounds for nonrecognition, such as where the proceedings did not allow the opportunity to contest the matter or conflicts with other court orders.