An overview of the European Patents and Grant Procedure
By Malavika Kumar
Original ideas, creative and
innovative work are widely being considered as assets on par with material
goods in terms of their commercial value. The responsibility of establishing
and protecting the ownership of ideas and their representation is the function
of intellectual property rights such as patents, utility models, copyrights,
trademarks or designs. Patents, in particular are concerned with the technical
and functional aspects of the invention. Thus “patent” is a right granted for a
specific period of time, to the original inventor of a new and useful product,
process, apparatus or article of manufacture. A patent confers the right to
exclude others from deriving economic gain by making, using, selling, offering for sale, or importing the patented
invention without the owner’s permission.
The Convention on the Grant of European Patents (1973), commonly
known as the European Patent Convention (EPC), is a multilateral treaty which
provides an autonomous legal system according to which European patents
are granted.[1] The EPC
provides a legal framework for granting patents in Europe[2]
via a single, unitary procedure and forms the legal basis for the European
Patent Organisation and its executive organ, the European Patent Office (EPO).
Under the European Patent Convention an applicant can get patent protection in
more than 30 European Countries on the basis of a single application. The
European Patents are granted by the EPO and the procedure for the grant is
conducted in one of its three official languages namely, English, French or
German.[3]
All the contracting states to the EPC have the option of applying for a
national patent. However, if the countries decide that they need protection in
other countries as well, then they can seek the same within a time frame of 12
months from the date of first filing of the application. A European Patent
Application may claim priority over the national application or in certain cases
may be derived on the basis of an international application filed under the
Patent Cooperation Treaty.
Article 52(1) of the European Patents Convention, 1973 reads as follows:
“European patents shall be granted
for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.”
The Revised European Patents Convention[4] states that:
“European Patents shall be granted for any inventions, in all fields of technology, provided
that they are new, involve an inventive step and are susceptible of industrial
application.”
Patentability Criteria
The three main criteria for patentability under the European Patents Convention are:
Invention
The European Patents Convention (EPC) does not define as to what is an “invention”. Nonetheless, its lists subject-matter that cannot constitute an invention, or inventions excluded from patentability.[5] Discoveries, mathematical methods, business methods and computer programs are not considered as inventions. However, a computer program is not excluded from patentability, if it causes a further technical effect going beyond the “normal” physical interaction between the program software and the computer.[6] Secondly surgical treatments, therapeutic procedures for treatment of human or animal body are not patentable as they are not regarded as inventions susceptible of industrial application.[7]This exception does not exclude patentability of other methods of treatment of live human beings and animals. For e.g. treatment of body tissues after they have been removed from the human body. Thirdly new plant varieties are completely excluded from patentability[8] as separate form of protection is available in most of the contracting states under the E.U. Law. Lastly, the European Patent convention does not recognize inventions whose publication or exploitation would be contrary to “ordre public” or ethical principles or morality such as means of cloning of human life.[9]
An invention is considered to be new if it does not form a part of the state of the art.[10]State of the art includes anything which is made available to the public anywhere in the world by means of a written or oral description, by use or any other way, before the date of filing or priority.[11]Therefore the state of the art is formed by disclosure made either in writing in any language, in any number of copies reproduced in any form or by an oral presentation to the public and in certain cases by use or the product /commercialized method or making it know in any other manner for instance through the Internet or CD-ROM.
Inventive Step
An invention, though not defined in the EPC is said to involve an inventive step if it is not obvious to a skilled person in the light of the state of the art.[12] In assessing inventive step as opposed to novelty, multiple sources of prior art may be applied. The inventive step requirement is intended to prevent exclusive rights forming barriers to normal and routine development.[13]
Industrial Application
An invention which can be used in any kind of industry, inclusive of
agriculture is considered susceptible of industrial application.[14] An invention shall be considered industrially
applicable if it contributes to progress in the art of producing material
goods. An invention may be considered industrially applicable if
reworking it typically implies substantial investment in equipment.[15]
Therefore an invention to be industrially applicable should be capable of being
associated with commerce or trade.
European Patent Grant Procedure
The following are the stages involved in the grant of a patent under the European Patent Convention:
Ø
Filing the European Patent Application
A European patent application (EPA) may be filed by any natural or legal person, by an inventor or his successor in title or any body equivalent to a legal person, irrespective of his nationality and place of residence or business.[16] A European patent application may also be filed by joint applicants. While filing the application, the applicant must designate the contracting state sin which he seeks protection of his invention.[17]As per Art. 14 of the EPC a European patent application needs to be filed in one of the three official languages namely, English, French or German. The application can be filed with the European Patents Office at Munich, or at its branch at Hague or Berlin.[18]It may also be filed at the International Bureau[19] or central industrial property office or the National Office in the contracting state.[20]
The European patent application needs to consist of the following components namely[21]:
The applicant may claim benefit of a reduced filing fee by filing the application online.[22]Alternatively the applications may be filed in writing directly or sent by post or fax. However, an applicant cannot file an EPA by way of telegram, telex, teletex or e-mail. The date of filing accorded to applications filed sent via post to the EPO is the date on which they are received.
Ø
Formalities examination
1. Requirements
for the filing date:
The application is received by the Receiving Section which examines whether a filing date can be accorded on the basis of the patent application. In case deficiencies found are not remedied within the requisite time limit a filing date shall not be allocated and the application will not be dealt with as a European Patent Application.[23]
2. Fees
on filing
After allocating the date of filing, the Receiving Section further examines whether the following fees have been paid[24] :
The above fees need to be paid within the time limit of one month. Further, one month grace period is accorded along with the applicable surcharge incase of failure to pay the fees.
3. Translation
Within three months of filing the application, and not exceeding thirteen months, the applicant must file a translation in one of EPO’s official languages, which is then made the language of the proceedings.[25]Application is deemed to be withdrawn on account of failure to file translation within due time.
Ø
Search
While the formalities examination is in progress, the European search is performed.[26]The object of the search is to discover the existence of state of the art, if any which is relevant for the purpose of determining whether, and if so to what extent, the invention to which the application relates is new and involves an inventive step. A search report which is made based on the claims, description and the drawings submitted is transmitted to the applicant along with its copies. After July, 2003 the applicants have the advantage of obtaining an opinion on patentability through the Extended European Search Report. On receipt of the search report the applicant may withdraw the application, incase of absence of a likelihood of success or may decide to proceed with the patent grant procedure. For a patent to be granted, a European patent application must comply with ‘unity of invention.’ It implies, that an application must relate to a single invention or to a group of inventions so linked to form a single general inventive concept.[27]
Ø
Publication
Article 93 of the EPC states that a European patent application is published on the lapse of eighteen months since the date of filing or the date of priority. The publication consists of the filed description, the claims and any drawings along with the abstract. The European patent application is not published if it has been finally refused or withdrawn or deemed to be withdrawn before completion of technical preparations for publication.[28]Art. 67 EPC states that a published European patent application affords provisional protection which is no less than that conferred by a contracting state for a published national application and which shall include the right to reasonable compensation incase of wrongful infringement. Publication of the European patent application enables all files relating to it, to be open for public inspection.[29]However, the requestor of such information is required to make an undertaking to the proprietor with regard to restrictions on the transmission and use of such material.
Ø
Substantive Examination
Substantive Examination is the determination by the EPO whether or not the subject-matter of the European patent application meets the requirements of the European Patent Convention.[30] A request for examination may be made in writing within 6 months from the date of publication of the European search report in the European Patent Bulletin. The prescribed fee is to be paid along with the request application. The examination division is governed under Art.18 EPC. The division consists on three examiners. The first examiner performs examination and also maintains contacts with the applicant and issues necessary communication, the second member conducts formal checks and the overall procedural responsibility is retained by the Chairman. In order to ensure maximum objectivity, final decision on the application is taken by the examination division as a whole. The examination procedure followed by the EPO is an ex parte procedure. Since examination is an ex post facto analysis EPO examiners use the problem and solution approach while conducting the examination.[31]
Ø
Refusal or Grant
The decisions of the examination division may be two fold i.e. either :
(i) Grant of the Patent(Art. 97(2) EPC); or
(ii) Refusal to grant the Patent (Art. 97(1) EPC)
In cases where the application meets the requirements of the European Patent Convention the patent is granted. For the patent to retain its protective effect and to be enforceable, it must be validated i.e. the patent owner has to file a translation of the specification into an official language of the state with the national patent office. Fees may also be made payable by a certain date.[32]
If the application does not meet the requirements stated in the EPC the patent is refused but there exists a possibility of appeal against this decision.[33]
Ø
Opposition
After the European patent is granted, it may be opposed by the third parties within a period of nine months from the publication of the grant.[34]The opposition procedure is an independent procedure which takes place after the grant procedure in which a patent granted may be maintained, limited or revoked. It is an inter partes procedure.
Article 100 EPC mandates that opposition may be filed only on the grounds of lack of :
This implies that the opponent has to list out any one of the following grounds for opposition and the same should be supported by facts, evidence and arguments.
The examination of oppositions is handled by the European Patent Office’s opposition division which comprises of three examiners.[35] While the Chairman retains the overall responsibility, the first examiner performs the examination and the second examiner takes minutes in oral proceedings. Eventually a legally qualified member is competent to hear the witnesses and address the legal issues. Incases where oral proceedings have to be conducted either on the request of the parties or at the instance of the EPO, the parties are summoned as quickly as possible.[36] The oral proceedings are generally conducted in the same language as the other proceedings. However it may be conducted in any other official language if the same is requested prior to one month or any admissible non-official language provided there is a provision for interpretation of the same. In certain cases the proceedings are also conducted in the language agreed upon by the parties.
After conducting the proceedings, if it is concluded that the grounds for opposition prejudice the maintenance of the European patent, the patent is revoked else the opposition is rejected.[37] If the opposition division is of the opinion that the patent can be maintained in an amended form, it issues an interlocutory order, stating the amendments to be made by the proprietor.[38] Appeal may be allowed against the interlocutory order, however if the interlocutory order becomes a final decision, the proprietor has to pay the requisite fees and make the required amendments within a period of three months.
Ø
Appeal
Decisions by the Receiving Section, the Examining Division, the Opposition Division and the Legal Division at the EPO are subject to appeal.[39] The Boards of Appeal (BoA) has a prominent place in the EPO.[40] The BoA are bound only by the European Patent Convention and have their own rules of procedure. The Legal Board of Appeal and the Technical Board of Appeal give independent final rulings on appeals against decisions taken during grant and opposition proceedings. Decisions pertaining to the uniform application of law and important points of law are delivered by The Enlarged Board of Appeal.[41]
Any party to the proceedings adversely affected by a decision may appeal. Such a party may be an applicant, patentee or an opponent. Art. 108 EPC stipulates that a notice of appeal must be filed in writing along with the required statements within two months after the date of notification of the contested decision. It is pertinent to note that an appeal should be within the same legal and factual framework of the decision made in the first instance.[42] Subsequent to examining the appeal along with the observations made by other parties the Board of Appeal gives the appellant directions for adding further submissions.
The Boards of Appeal may issue one of the following decisions:
Remittance of a case to the first instance occurs when a new piece of prior art is cited during the course of appeal proceedings, or due to substantial amendments or substantial error made at the first instance. It is pertinent to note that decisions of the Boards of Appeal don not have a binding effect on national procedures. For example, German Civil Court regards the comments made in the grounds for a decision in an EPO opposition or in a subsequent appeal procedure are considered as expert opinions which must be taken into account, no more and no less.[43]
Today’s world economy is a knowledge-based economy. Between 1992 and 2002, the number of patent applications filed in Europe, Japan and United States grew more that 40%.[44] Since patents have the capacity to enhance innovation and economic growth the procedure for their grant needs to be akin with the latest developments at the international front. Thus in an attempt to harmonize the European Patent Law in tune with the International Law, Trade Related Aspects of Intellectual Property Rights (TRIPS) and to make it more flexible and ensure greater legal security the European Patent Office has revised the European Patent Convention which will take effect from December, 2007.The modernized EPC caters to the concept of globalization, in so much as applications can now be filed in any language so long as they are translated subsequently. The European Patents Convention, 2007 aims to make the procedures before the EPO quicker, more transparent and efficient.
Internet Resources:
www.european-patent-office.org
www.epoline.org
www.wipo.int
www.eupat.ffii.org
www.en.wikipedia.org
In-House Publications
of the European Patents Office:
[1] www.en.wikipedia.org
[2] Art.2(1) EPC
[3] Oswald Schroder, European Patents and the Grant Procedure, Published by European Patents Office, Munich.
[4] Art.52(1) EPC 2000 with effect from December,2007
[5] Art. 52(2) EPC
[6] Art. 52(3) EPC
[7] Art.52(4) EPC
[8] Art.53(b)
[9] Art 53(a)
[10] Art.54(1) EPC
[11] Art.54(2)
[12] Art 56
[13] “How to get a European Patent-Guide for applicants.” Published by European Patents Office, 10 Edition April 2004.
[14] Art.57 EPC
[15] www.eupat.ffii.org
[16] Art.58,59,118 EPC
[17] Art.79 EPC
[18] Art 75(1)(a) EPC
[19] Art.150 EPC
[20] Art.75(1)(b) and Art.77 EPC
[21] Ibid 3
[22] Rule 24(1) EPC www.european-patent-office.org
[23] Art.90(2) EPC
[24] Art 90 EPC
[25] Art 14(2) EPC
[26] Art.92 EPC
[27] Art.82 EPC
[28] Rule 42(8) EPC
[29] Art.128(1) – (4) EPC
[30] Art.94 EPC
[31] Sten Harck The role of the EPC in Europe: The Life of a file in the EPO (2007)
[32] Ibid 3
[33] Art. 106 EPC.
[34] Art.99 EPC
[35] Art.19 EPC
[36] Art.116(1) Rule 71 EPC
[37] Art.102 EPC
[38] Art.113 EPC
[39] Art.106 EPC
[40] Pascal Moutard The Boards of Appeal at the EPO (2006) Intellectual Asset Magazine.
[41] Ibid 28
[42] Ibid 37
[43] Ibid
[44] Rich in intellectual property: The economic impact of patents. The European Inventor Magazine (2007)