Different from the European Community Trademark system, currently there exists no EU-wide “European Patent”. The so-called European patent merely represents a unified application and examination procedure, which is made in accordance with the European Patent Convention (“EPC”) signed by 31 European countries. The EPC members are not identical with European Union members; some non-EU countries including Switzerland, Liechtenstein, Turkey Monaco, Bulgaria, Romania and Iceland are EPC members, and one EU member state, Malta, is however not EPC member.
Unlike the European Community trademark, the European patent (hereinafter, “EPC patent”) is not automatically effective and enforceable EU-wide. Rather, after an EPC patent is granted, relevant national-level procedure must be completed to make this EPC patent effective and enforceable in the EPC member states designated by the applicant.
EPC vs. PCT
Similar to EPC is another international patent application system instituted in accordance with The Patent Cooperation Treaty (“PCT”), which has been signed by 132 countries. The PCT provides a unified procedure for filing patent application internationally. However, unlike the EPC procedure, PCT does not provide a unified examination system. Specifically, although the PCT application filing and the related prior art search are handled on international level, the patent offices of the PCT member states designated by the applicant are in charge of the examination and grant of patent rights.
The main advantage of the PCT application is that the applicant may file a patent application internationally with one single application, in one language, to one authority. The priority right protection under a PCT application is 30 months starting from the application date or an earlier priority date, which gives the applicant more time to consider relevant market factors before deciding whether and in which countries to apply for patent rights. In addition, in case of a PCT application, the applicant does not need to pay the official fees and relevant cost (such as translation) until the application enters into the respective examination procedure of the designated countries.
The most obvious difference between EPC and PCT is that the EPC application will be reviewed and examined by European Patent Office following EPC regulations; however, the PCT application will be reviewed and examined by the patent office of each of the designated PCT countries following their respective national laws.
The EPC system is applicable only for patentable inventions. Applications for an EPC patent may be filed directly with the European Patent Office (“EPO”) or with the patent offices of any of the EPC member states for further submission to the EPO. EPC patent applications can be filed in English, French or German, and the filing language will be used in the whole procedure.
EPC grants the applicants a 12-months priority right protection if they have first filed patent applications in any of the Paris Convention member countries (which do not includeTaiwan. With the new European Patent Convention 2000, which will come into force on 13 December 2007, it will also be possible to claim priority from any member of the World Trade Organization, thus including Taiwan.
Upon filing, the applicant shall designate the EPC countries where patent protection is sought. In practice, most of the applicants would first include all EPC countries in the application and determine the exact scope of patent protection at a later stage.
After an application is filed, the EPO will conduct a prior art search and provide the result to the applicant. Within 18 months starting from the filing date, the EPC patent application will be published, regardless of whether the prior art search report has been provided to the applicant. The prior art search report will also be published, either together with the publication of patent application or later on.
Within 6 months from the publication of the prior art search report, the applicant shall confirm the designated EPC countries where patent protection is desired by making relevant official fee payment. After this phase it will be impossible to change the designated EPC countries. Within this 6-months period, the applicant must also apply for examination of the patent application and pay the examination fee. The application will be deemed withdrawn if the applicant fails to comply with the forgoing within 1 month upon the EPO's notice in this regard.
Examination and the grant of patent right
Examination of EPC patent application will be handled by EPO. During the examination procedure, the EPO examiner may discuss the possible grounds of refusal with the applicant and the applicant would have the chance to amend the patent claims. If the examiner agrees to the application, an EPC patent will be granted and a certificate thereof will be issued. The newly granted EPC patent will take effect starting from its publication in the European Patent Bulletin.
As stated above, the EPC patent system is merely a unified procedure of patent application and examination, and an EPC patent itself would not automatically be enforceable in the designated EPC member countries. Rather, a “validation” procedure in each of the designated countries is required. Said procedure, being made in line with the EPC, may differ from country to country.
The above-mentioned “validation” shall be made within 3 months (or a longer period provided by relevant laws) after an EPC patent is granted, by filing with the patent office of each of the designated EPC countries, providing translation of the patent specification (or for some countries, only the patent claims) in the official language of that country.
An EPC patent is valid for 20 years from the application date. Annual renewal fees need to be paid in each of the designated country to maintain the validity and enforceability of the patent rights in respective countries.
Within 9 months after an EPC patent is granted, any third party may file an opposition against the patent. The opposition is handled by the EPO and in about 70% of the opposition cases the validity of the patents is upheld; said rate reduces to 50% if an appeal against the EPO's decision is filed.
In 2004, 178,600 EPC applications were filed and 45% thereof were granted. The average time needed for obtaining an EPC patent is about 46.2 months. (Source: EPO's Annual report 2004)
With respect to patent protection strategy for the whole Europe, the EPC system would be advantageous to patentees due to its simplified procedure and cost-efficient character.
Lee & Schwerbrock provides services for EPC patent application and related proceedings, please contact us for further details.