Protecting Inventions in Europe
The European Patent Office
EPO – History
Countries Belonging to the EPO
Cost of Filing an EPO Patent Application
Official Languages of the EPO
Procedures Followed by the EPO
EPO – Substantive Law
1. Novelty Rules
2. Statutory Subject Matter
3. New Matter
The European Patent Office (EPO), with its headquarters in Munich, Germany, officially came into existence in 1977 when ten European states banded together to form the EPO. It is regulated by a treaty known as the European Patent Convention (EPC). Back in 1977 there were many skeptics who doubted whether or not the EPO would succeed. There was a substantial group who considered that even if it managed to achieve permanence, it would be at best an ancillary patent office to the national patent offices of the member countries. Those skeptics could not have been more wrong! The EPO has succeeded beyond people’s wildest imaginations with the number of patent applications being filed having grown to 265,690 in 2013. Indeed, the success of the EPO has led to the downsizing, and perhaps even gutting, of several national patent offices. For example, the once prestigious Dutch Patent Office, which had a reputation of searching and examining inventions in depth has been relegated to a role of simply registering Dutch patents, as opposed to examining the underlying inventions on their merits.
Since the EPO opened in 1978, additional countries have joined the EPC, often in step with joining the European Economic Community, now known as the European Union (EU). Sometimes countries have become a so-called “extension country” before formally joining the EPC. As extension countries, European Patents can be extended to them, without the need for the country in question to assume all of the responsibilities associated with being a full-fledged member of the EPC.
It should be noted that the EPO is not part of the EU, rather it is an autonomous organization. Indeed, membership in the EPO is not exclusively for EU member countries, as evidenced by the fact that Switzerland is a longtime member of the EPC without having joined the EU. Similarly, not all members of the EU are necessarily also members of the EPC, as evidenced by the fact that Malta joined the EU in 2004, but became a member of the EPC on March 1, 2007.
EPC Member States
• Czech Republic
• Former Yugoslav Republic of Macedonia
• San Marino
• Slovak Republic
• United Kingdom
Although not members of the EPO, arrangements have been made so that protection can also be extended to Bosnia and Herzegovina, and Montenegro. An updated list of European Union member states is available at http://europa.eu/about-eu/countries/index_en.htm
Fees and Costs
After a European patent application is filed, all or only some of the countries noted above for which protection is desired are designated and a relevant fee paid for each (and for applications filed after July 1, 1999, the maximum number of country designation fees which need be paid is seven – except in the case of extension countries which are separately designated). European official fees have historically tended to be rather high, compared to governmental patent fees in other countries, but this is usually attributed to the fact that the EPO must be financially self-supporting. The EPO’s official fees, even though they are still high when compared with the fees of other patent offices, are much less than the fees which would be encountered by filing separate patent applications before the national patent offices of the member states. Moreover, given the fact that only one patent application need be prosecuted for all the European states, obtaining pan-European patent protection via one European application is much less expensive than filing before a number of separate national patent offices. The cost of filing a patent application at the EPO will depend on a number of factors, including the sheer size of the application, the number of claims, and whether or not the European application is based on a prior Patent Cooperation Treaty (PCT) application. As a general rule of thumb, it is normally estimated that if one requires protection in more than three or four designated states, it is cheaper to file a single European application than it is to file separate national patent applications.
Patent applications can be filed in the English language, and the EPO rules specify that the language of the proceedings at the office will be the same as the language in which the application is originally filed. Thus, once the application is filed in English, that means that the prosecution before the Examiner will similarly be in English. However, once the European patent application has been allowed by the Examiner and granted as a European patent, it may be necessary for the applicant to file translations in the designated countries within applicable time periods, and if a translation is not filed, the underlying invention enters the public domain in the country concerned. A number of countries including France, Germany and Switzerland no longer require any translation for a European Patent to be effective in their territories. Others now require only a translation of the claims. However, several, including Italy and Spain, still require a full translation. Alternatively, applications can be filed and prosecuted in French or German.
Procedure at the European Patent Office
Procedurally, the practice before the EPO follows the international norm of publishing the application 18 months after the priority date and requiring the applicant to file a Request for Examination before an Examiner reviews a patent application on its merits. After the application is filed, the EPO will issue a Search Report identifying the most relevant prior art which an Examiner at the EPO was able to uncover. That Search Report is published and, within a six-month time limit after publication of the Search Report, a Request for Examination and a substantial Examination Fee must be lodged together with fees based on the number of states being designated. If a Request for Examination is lodged and the requisite fees are paid within that time period, the application is then taken up by a European Examiner for examination on its merits. Official communications will likely be issued by the Examiner citing art which was uncovered in the Search Report or occasionally citing additional prior art not cited in the Search Report. The Examiner may also call for other amendments to be made to the application. For example, the claims may have to be “characterized” vis-a-vis the closest prior art reference and since that reference is often unknown at the time the application is filed, this step is usually left to be done during prosecution. One other requirement of the EPC that should be attended to before filing is that one is normally permitted only one independent claim in each claim category. Responses must be filed to the official communications, or the European patent application will become abandoned.
If the EPO was designated in a Patent Cooperation Treaty (PCT) application then the aforementioned procedures are altered somewhat to reflect the fact the PCT application is published at eighteen months and the National Stage at the EPO is entered after the PCT application has been published and after a search has been accomplished during the international phase. See Protecting Inventions Internationally to learn more about the advantages of PCT procedures.
When all objections have been overcome, the EPO issues a communication advising of its intention to grant the application and provides a copy of the allowable text to the applicant. The applicant is given a chance to approve the text, and the approval of same normally acts as a cutoff for making further substantive amendments to the specification and claims and also to the filing of possible divisional patent applications.
As the application proceeds to grant, it becomes necessary to file translations of the claims into French and German. Any necessary translations must be filed for the various national patent offices where the applicant still desires to obtain protection. Furthermore, the European patent will be subject to the possibility of a third party filing an opposition for nine months after the date of grant. Thus, the costs entailed in attending to the required translations and in payment of fees almost always are incurred by the applicant before it is known whether an opposition has been lodged against the application.
If the Examiner rejects the application, an appeal may be taken to the EPO Board of Appeals. Prior to taking the step of lodging an appeal, applicants often request oral proceedings, which take the form of an oral hearing prior to the appeal. The oral proceedings allow for a reasonable flexibility in the development of arguments in favor of the claims or for possible alternative ways of amending the claims. Technical experts, including inventors, are welcome to attend the oral proceedings to assist in elucidating the technology to the Examiners. Indeed, having the client available or preferably present at an oral proceeding can be quite advantageous as the Examiners who attend the proceedings might offer an amendment to the claims which would overcome whatever problem they have with the claims, but a decision usually has to be made on the spot.
If agreement cannot be worked out in the oral proceedings, the next step is a formal appeal to the Board of Appeals. The Board of Appeals is the tribunal of last resort when it comes to European patent claims. If you lose at the Board of Appeals, its decision is final – there is no court of law that reviews the decisions of the EPO Board of Appeals.
The European Patent Convention provides, as do the patent laws of many jurisdictions, for the collection of compensation from those who use the invention after the application is published, but before the patent is granted. However, to take advantage of this provision, it is normally necessary to file a translation of the claims of the pending application in the national patent offices of the countries in which such protection is desired.
Substantive Law Provisions
To be novel, an invention must not form part of the prior art on the date the European patent application is filed or its priority date, if priority is claimed to a corresponding application. The prior art is deemed to comprise everything made available to the public by means of a written or oral description or by use or in any other way that will enable the public to determine what the invention is. Additionally, the contents of prior unpublished European Patent Applications are considered to be prior art for the purpose of determining the novelty of the invention. This definition is very different from the prior art definition in the United States, since
(a) an offer for sale or a sale of something embodying the invention, by itself, does not necessarily cause the invention to be “made available to the public,”
(b) prior unpublished applications can only be used for the basis of objecting to the application as lacking novelty (rather than for lacking an inventive step); and
(c) there is no grace period for publications originating from the inventor.
2. Statutory Subject Matter
In a number of ways, the bounds of statutory subject matter in the European Patent Office are more limited than they are in the United States. The definition of what is statutory subject matter in the United States is a broad, simple one which dates from the time of Thomas Jefferson. The European definition is the result of political debate between the representatives of over a dozen countries and shows clear evidence of compromise drafting. For example, the EPO tends to take a more limited view of what is patentable when it comes to computer-related inventions involving the use of computer programs, protection for animal and plant life forms and their methods of production, and methods of treatment of humans or animals for surgery, therapy or diagnosis. Recent developments regarding computer-related inventions and methods of surgical treatment are discussed elsewhere in these pages.
Patentability of pharmaceuticals – The European Patent Convention does not restrict the patentability of pharmaceutical products, but rather, restricts methods of treatment of the human or animal body by therapy, surgery or diagnosis. This position is complicated by another proviso that states that this prohibition should not exclude patentability for any substance or composition for use in such a method, even if previously known for some other purpose, so long as that purpose was not a method of treatment or diagnosis practiced on a human or animal body.
Following a change in the European Patent Convention that became effective on December 13, 2007, use-limited compound claims (ie, “compound x for treating disease y”) have been permitted replacing the old “Swiss Formulation Claim” which adopted the legal fiction of treating a claim in the form “use of compound x for preparing a medicament for treatment of disease y” as being novel.
Biotechnology – A further area in which differences from the norm in the United States may occur is in the field of biotechnology. So far the decisions of the EPO Board of Appeals in this area have been consistent with those of the United States Patent and Trademark Office (USPTO) prior to the U.S. Supreme Court’s holding that genes were unpatentable. In Europe, an isolated gene is patentable as long as its function is explained in the specification. However, two differences exist that may have consequences in the future:
First, the EPO must make an assessment of whether an invention is contrary to morality before a patent can be granted.
Second, the EPO can not grant patents for new plant or animal “varieties” (which term has been construed to mean a class narrower than a species so that a claim directed to a genetically modified non human mammal was held to be patentable). Nor can the EPO grant a patent for an essentially biological process for the production of plants or animals. The case law essentially holds that for there to be an invention, there must be a technical solution to a technical problem.
Computer Software Related Inventions – Notwithstanding specific prohibitions on the patentability of computer programs, mathematical methods and mental acts, as a whole, the EPO Board of Appeals has interpreted the European Patent Convention expansively with respect to statutory subject matter. However, in the field of computer software related inventions, the EPO is still more restrictive in its approach to what is patentable than is, for example, the USPTO.
For a more in depth analysis, the reader is directed to our report on the Protection of Software-related Inventions in Europe and Japan.
3. New Matter
An area in which the Board of Appeals has not read the European Patent Convention expansively is that of new matter. In the United States, new matter is considered new technical subject matter added to a patent application after it is filed. That new technical subject matter must either be removed, or the U.S. Examiner will object to the application as including new matter and refuse it on that ground. Although, in principle, the same criteria are used in Europe, experience shows that it is often more difficult to make amendments in the EPO than it is in the USPTO. Whether or not the application draws a new matter objection in Europe turns on the facts of the individual case. There are no hard and fast rules as to whether or not a particular change is considered to include new matter. The issues revolve around the question of whether members of the public who rely on the 18-month publication of the application might be prejudiced by the subsequent change. The change which triggers a new matter objection can entail the addition of new technical subject matter or even the broadening of a claim or combination of features disclosed separately in the specification. The test is whether the wording of the amendment can be “directly and unambiguously” derived from the original specification. Moreover, if a European patent application claims priority to a priority-founding U.S. application, then the submission of broader claims in the European application ab initio may be found to lack support in the original priority-founding application, and thereby possibly be barred by the applicant’s own activities in promoting the invention after the U.S. patent invention was filed. See the report regarding the “Effect of Publication After the Priority Date” reported elsewhere in these pages.
In summary, the EPO can be a very good venue to file patent applications. However, there are certain pitfalls in Europe with respect to the subject matter which can be protected and in European concepts of new matter. The procedure before the EPO is certainly different than that found in the United States, but it is also straight forward. It is also much more expensive to file a European patent application than it is to file a similar U.S. application, yet the benefits of filing patent applications at the EPO for most inventions outweighs (i) the costs of filing multiple independent applications before national patent offices and (ii) the pitfalls noted above.