European patent law
Encyclopedia
European patent law covers a wide range of legislation
s including nation
al patent
law
s, the Strasbourg Convention
of 1963, the European Patent Convention
of 1973, and a number of European Union directive
s and regulation
s.
Patents having effect in 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 not a body of the European Union and the states contracting to the European Patent Convention (the legal basis for the EPO) are different from those forming the European Union. A patent granted by the EPO does not lead to a single European Union
-wide patent enforceable before one single court
, but rather to independent national patents enforceable by national courts according to different national legislations and procedures.
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) and the Patent Law Treaty
(PLT).
s, 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 European Patent Office. 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 nationlise an international application in those countries directly and protection can only be obtained via the EPO.
(EPO) under procedures established by the European Patent Convention
(EPC). A European patent is a regional, non-unitary patent. Some 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 required translation is not filed, the European patent is deemed to have no effect from the outset in that State. The London Agreement
, which entered into force on May 1, 2008, significantly reduces the number of required translations.
The European patent can be revoked under the laws of a Contracting State on certain grounds (specified in EPC Articles 138 and 139) with effect only in that State. A central time-limited opposition procedure
and central limitation and revocation procedures
before the EPO are available however. The opposition procedure allows a third party, i.e. any person except the patent proprietor, to oppose a granted European patent in an attempt to have the EPO reconsider the grant of the patent and possibly revoke or amend the patent. The opposition procedure may only be initiated within nine months of the grant of the European patent. The limitation and revocation procedures allow the patent proprietor to centrally request the limitation or revocation of his own European patent.
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).
s are available in Austria
(Gebrauchsmuster
), France
("certificat d'utilité"), Germany
(Gebrauchsmuster
), Spain
and Italy (modello di utilità), Finland
("hyödyllisyysmalli") (this list is however non-exhaustive). The term of a utility model is usually shorter than the term of a patent.
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 the United Kingdom the same court is in charge of examining validity and infringement actions. According to Mr Justice Kitchin, a British judge,
In this respect, Lord Justice Jacob referred to a comparison reportedly made by Professor Mario Franzosi between a patentee and an Angora cat:
system, which would lead to a single unitary patent, has been debated since the 1970s, but those debates have yet to reach agreement on the institution of such a system. The principal problems facing such a system are centered around the language of granted patents and which courts would have jurisdiction. Other legal agreements have been proposed outside the European Union legal framework to reduce the cost of translation
(of patents when granted) and litigation
, namely the London Agreement
and the European Patent Litigation Agreement
(EPLA).
Legislation
Legislation is law which has been promulgated by a legislature or other governing body, or the process of making it...
s including nation
Nation
A nation may refer to a community of people who share a common language, culture, ethnicity, descent, and/or history. In this definition, a nation has no physical borders. However, it can also refer to people who share a common territory and government irrespective of their ethnic make-up...
al patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
s, the Strasbourg Convention
Convention on the Unification of Certain Points of Substantive Law on Patents for Invention
The Convention on the Unification of Certain Points of Substantive Law on Patents for Invention, also called Strasbourg Convention or Strasbourg Patent Convention, is a multilateral treaty signed by Member States of the Council of Europe on November 27, 1963 in Strasbourg, France...
of 1963, the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
of 1973, and a number of European Union directive
European Union directive
A directive is a legislative act of the European Union, which requires member states to achieve a particular result without dictating the means of achieving that result. It can be distinguished from regulations which are self-executing and do not require any implementing measures. Directives...
s and regulation
European Union regulation
A regulation is a legislative act of the European Union that becomes immediately enforceable as law in all member states simultaneously. Regulations can be distinguished from directives which, at least in principle, need to be transposed into national law...
s.
Patents having effect in European states may be obtained either nationally, via national patent offices, or via a centralised patent prosecution
Patent prosecution
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
process at the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO). The EPO is not a body of the European Union and the states contracting to the European Patent Convention (the legal basis for the EPO) are different from those forming the European Union. A patent granted by the EPO does not lead to a single European Union
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
-wide patent enforceable before one single court
Court
A court is a form of tribunal, often a governmental institution, with the authority to adjudicate legal disputes between parties and carry out the administration of justice in civil, criminal, and administrative matters in accordance with the rule of law...
, but rather to independent national patents enforceable by national courts according to different national legislations and procedures.
European patent law is also shaped by international agreements such as the World Trade Organization
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
's Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
(TRIPs Agreement) and the Patent Law Treaty
Patent Law Treaty
The Patent Law Treaty is a patent law multilateral treaty concluded on 1 June 2000 in Geneva, Switzerland, by 53 States and the European Patent Organisation...
(PLT).
Types of patent protection in Europe
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 and may co-exist within a given jurisdiction. Utility modelUtility model
A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...
s, referred to as "Gebrauchsmuster
Gebrauchsmuster
In German and Austrian patent laws, the Gebrauchsmuster , also known as German utility model or Austrian utility model, is a patent-like, intellectual property right protecting inventions....
" in Germany
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
and Austria
Austria
Austria , officially the Republic of Austria , is a landlocked country of roughly 8.4 million people in Central Europe. It is bordered by the Czech Republic and Germany to the north, Slovakia and Hungary to the east, Slovenia and Italy to the south, and Switzerland and Liechtenstein to the...
, are available in some countries.
Patent applications can be filed at the relevant national patent office or at the European Patent Office. Alternatively, an international application may be filed under the Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT) and later nationalised in the desired countries or at the EPO. However, Belgium
Belgium
Belgium , officially the Kingdom of Belgium, is a federal state in Western Europe. It is a founding member of the European Union and hosts the EU's headquarters, and those of several other major international organisations such as NATO.Belgium is also a member of, or affiliated to, many...
, Cyprus
Cyprus
Cyprus , officially the Republic of Cyprus , is a Eurasian island country, member of the European Union, in the Eastern Mediterranean, east of Greece, south of Turkey, west of Syria and north of Egypt. It is the third largest island in the Mediterranean Sea.The earliest known human activity on the...
, France
France
The French Republic , The French Republic , The French Republic , (commonly known as France , is a unitary semi-presidential republic in Western Europe with several overseas territories and islands located on other continents and in the Indian, Pacific, and Atlantic oceans. Metropolitan France...
, Greece
Greece
Greece , officially the Hellenic Republic , and historically Hellas or the Republic of Greece in English, is a country in southeastern Europe....
, Ireland
Ireland
Ireland is an island to the northwest of continental Europe. It is the third-largest island in Europe and the twentieth-largest island on Earth...
, Italy
Italy
Italy , officially the Italian Republic languages]] under the European Charter for Regional or Minority Languages. In each of these, Italy's official name is as follows:;;;;;;;;), is a unitary parliamentary republic in South-Central Europe. To the north it borders France, Switzerland, Austria and...
, Latvia
Latvia
Latvia , officially the Republic of Latvia , is a country in the Baltic region of Northern Europe. It is bordered to the north by Estonia , to the south by Lithuania , to the east by the Russian Federation , to the southeast by Belarus and shares maritime borders to the west with Sweden...
, Malta
Malta
Malta , officially known as the Republic of Malta , is a Southern European country consisting of an archipelago situated in the centre of the Mediterranean, south of Sicily, east of Tunisia and north of Libya, with Gibraltar to the west and Alexandria to the east.Malta covers just over in...
, Monaco
Monaco
Monaco , officially the Principality of Monaco , is a sovereign city state on the French Riviera. It is bordered on three sides by its neighbour, France, and its centre is about from Italy. Its area is with a population of 35,986 as of 2011 and is the most densely populated country in the...
, the Netherlands
Netherlands
The Netherlands is a constituent country of the Kingdom of the Netherlands, located mainly in North-West Europe and with several islands in the Caribbean. Mainland Netherlands borders the North Sea to the north and west, Belgium to the south, and Germany to the east, and shares maritime borders...
, and Slovenia
Slovenia
Slovenia , officially the Republic of Slovenia , is a country in Central and Southeastern Europe touching the Alps and bordering the Mediterranean. Slovenia borders Italy to the west, Croatia to the south and east, Hungary to the northeast, and Austria to the north, and also has a small portion of...
have "closed their national route" meaning that it is no longer possible to nationlise an international application in those countries directly and protection can only be obtained via the EPO.
European patents
A European patent is the product of a unified prosecution phase before the European Patent OfficeGrant procedure before the European Patent Office
The grant procedure before the European Patent Office 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...
(EPO) under procedures established by the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC). A European patent is a regional, non-unitary patent. Some EPC Contracting States require the patentee to file a full translation of the granted European patent with the national patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
of the State if the text of the European patent as granted is not in one of their official languages. If the required translation is not filed, the European patent is deemed to have no effect from the outset in that State. The London Agreement
London Agreement (2000)
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...
, which entered into force on May 1, 2008, significantly reduces the number of required translations.
The European patent can be revoked under the laws of a Contracting State on certain grounds (specified in EPC Articles 138 and 139) with effect only in that State. A central time-limited opposition procedure
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
and central limitation and revocation procedures
Limitation and revocation procedures before the European Patent Office
In European patent law, the limitation and revocation procedures before the European Patent Office 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...
before the EPO are available however. The opposition procedure allows a third party, i.e. any person except the patent proprietor, to oppose a granted European patent in an attempt to have the EPO reconsider the grant of the patent and possibly revoke or amend the patent. The opposition procedure may only be initiated within nine months of the grant of the European patent. The limitation and revocation procedures allow the patent proprietor to centrally request the limitation or revocation of his own European patent.
National patents
National patents are available in all European countries. In some European countries, national patents are substantively examined, while in other countries there is no provision for such examination.In the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, for example, the Patents Act 1977 and the Patents Act 2004
Patents Act 2004
The Patents Act 2004 is an Act of the Parliament of the United Kingdom. One of the purposes of the Act is to give effect to the revised European Patent Convention which was agreed by Diplomatic Conference in November 2000....
establish the law relating to patents including filing, examination, grant, infringement
Patent infringement
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...
, 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).
Utility models
In Europe, utility modelUtility model
A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...
s are available in Austria
Austria
Austria , officially the Republic of Austria , is a landlocked country of roughly 8.4 million people in Central Europe. It is bordered by the Czech Republic and Germany to the north, Slovakia and Hungary to the east, Slovenia and Italy to the south, and Switzerland and Liechtenstein to the...
(Gebrauchsmuster
Gebrauchsmuster
In German and Austrian patent laws, the Gebrauchsmuster , also known as German utility model or Austrian utility model, is a patent-like, intellectual property right protecting inventions....
), France
France
The French Republic , The French Republic , The French Republic , (commonly known as France , is a unitary semi-presidential republic in Western Europe with several overseas territories and islands located on other continents and in the Indian, Pacific, and Atlantic oceans. Metropolitan France...
("certificat d'utilité"), Germany
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
(Gebrauchsmuster
Gebrauchsmuster
In German and Austrian patent laws, the Gebrauchsmuster , also known as German utility model or Austrian utility model, is a patent-like, intellectual property right protecting inventions....
), Spain
Spain
Spain , officially the Kingdom of Spain languages]] under the European Charter for Regional or Minority Languages. In each of these, Spain's official name is as follows:;;;;;;), is a country and member state of the European Union located in southwestern Europe on the Iberian Peninsula...
and Italy (modello di utilità), Finland
Finland
Finland , officially the Republic of Finland, is a Nordic country situated in the Fennoscandian region of Northern Europe. It is bordered by Sweden in the west, Norway in the north and Russia in the east, while Estonia lies to its south across the Gulf of Finland.Around 5.4 million people reside...
("hyödyllisyysmalli") (this list is however non-exhaustive). The term of a utility model is usually shorter than the term of a patent.
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 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 claimClaim (patent)Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
when defending it but an expansive interpretation when asserting infringement."
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."
Community patent
The creation of a community patentCommunity Patent
The EU patent or European Union patent, formerly known as the Community patent, European Community Patent, or EC patent and sometimes abbreviated as COMPAT, is a patent law measure being debated within the European Union, which would allow individuals and companies to obtain a unitary patent...
system, which would lead to a single unitary patent, has been debated since the 1970s, but those debates have yet to reach agreement on the institution of such a system. The principal problems facing such a system are centered around the language of granted patents and which courts would have jurisdiction. Other legal agreements have been proposed outside the European Union legal framework to reduce the cost of translation
Translation
Translation is the communication of the meaning of a source-language text by means of an equivalent target-language text. Whereas interpreting undoubtedly antedates writing, translation began only after the appearance of written literature; there exist partial translations of the Sumerian Epic of...
(of patents when granted) and litigation
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
, namely the London Agreement
London Agreement (2000)
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...
and the European Patent Litigation Agreement
European Patent Litigation Agreement
The draft European Patent Litigation Agreement , or formally the Draft Agreement on the establishment of a European patent litigation system, is a proposed patent law agreement aimed at creating an "optional protocol to the European Patent Convention which would commit its signatory states to an...
(EPLA).
Forum shopping, the Brussels Regime and cross-border injunctions
See also
- Brussels RegimeBrussels RegimeThe Brussels Regime is a set of rules regulating which courts have jurisdiction in legal disputes of a civil or commercial nature between individuals resident in different member states of the European Union and the European Free Trade Association...
, i.e. Brussels Convention, the Lugano Convention, and the Brussels I Regulation (Council Reg (EC) 44/2001) - Cross-border injunctionCross-border injunctionIn European law, and especially in European intellectual property law, a cross-border injunction is an injunction by a court in one European country, such as a court in the Netherlands forbidding infringement in several other European countries....
- Enforcement of European patentsEnforcement of European patentsEuropean patents are granted by the European Patent Office under the legal provisions of the European Patent Convention . However, European patents are enforced at a national level, i.e. on a per-country basis...
- Eurasian Patent ConventionEurasian Patent ConventionThe Eurasian Patent Convention is an international patent law treaty instituting the Eurasian Patent Organization . It was signed on September 9, 1994 in Moscow, Russia.- External links :* On the Eurasian Patent Organization web site:** ** **...
(EAPC) - European trade mark lawEuropean trade mark lawEuropean trade mark law is governed by national law in the countries which make up Europe, together with European Law within those European countries which are also EU member states...
- European Union patent lawEuropean Union patent lawEuropean Union patent law is a subset of European patent law. It also serves as the superset of the patent laws of the individual states of the European Union . The most recent addition to the range of measures currently in place is the Directive on criminal measures aimed at ensuring the...
- Intellectual property in RomaniaIntellectual property in RomaniaIntellectual property law in Romania has developed significantly in the period since the Romanian Revolution of 1989 because of the need to enforce various regional and international treaties and agreements, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights , the...
- Patent infringement under United Kingdom lawPatent infringement under United Kingdom lawIn the United Kingdom, a patent provides its proprietor with the right to exclude others from utilizing the invention claimed in that patent. Should a person utilize that invention, without the permission of the patent proprietor, they may infringe that patent.- Legislation :Infringement under...
Further reading
- Patent Litigation in Europe 2005 report by Lovells comparing patent litigation before various EU national courts, and the differences between them.
- Bruno van Pottelsberghe, Lost property: The European patent system and why it doesn't work, Bruegel Blueprint Series, Volume IX, 29 June 2009, ISBN 978-9-078910-12-1