European patent

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A European patent is a patent that is granted by the European Patent Office (EPO) in accordance with the European Patent Convention (EPC) .

In contrast to the long-planned but still unrealized EU patent , this is not a patent that is valid for all of Europe or for the entire European Union . Only the application and the procedure for granting take place centrally at the European Patent Office (EPO). After grant, the European patent has the same effect as a national patent in those states that were named in the application and for which the respective national phases (by paying the necessary fees and possibly translating the patent specification into the respective official language) were initiated.

For this reason, a patent granted by the EPO can also be valid in states (e.g. Switzerland, Turkey) that are not members of the EU but are members of the EPC.

Anyone can apply for a European patent. If the applicant is not a national of a contracting state to the EPC or if he is not based in one of the contracting states, he must, with the exception of filing the patent application, be represented before the European Patent Office by an authorized agent.

conditions

The European Patent Office does not have to determine whether the patent applied for belongs to the patent applicant or to a third party. It only has to check whether an application fulfills the necessary conditions according to the articles and rules listed in the EPC. If so, the patent will be granted, otherwise the application will be refused.

Requirements for patentability

According to the EPC, European patents are granted for inventions that are new, involve an inventive step and are industrially applicable (Art. 52 (1) EPC). Furthermore, the criteria relating to the form must be met and the respective fees according to the fee schedule must have been paid.

Technicality

The term invention is not explicitly defined in the EPC, but is understood in the case law as an invention in a field of technology due to some of the terms used in the EPC (prior art, technical features, etc.) .

In the case of a patent application, for example, it must be possible to derive a technical problem from the application.

Exceptions to patentability

According to the EPC, discoveries, scientific theories and mathematical methods, aesthetic creations, plans, rules and procedures for intellectual activities, for games or for business activities, and programs for data processing systems and the reproduction of information (Art. 52 (2) EPC ) are expressly excluded from the invention ). In the absence of technicality , these cannot be claimed “as such”, but they can if they make a further technical contribution . A computer program "as such" that only runs on one computer and does not cause any further technical effect can therefore not be patented, but a computer program that controls a technical device (for example a production system or an X-ray device, see software patent , computer-implemented invention ) .

novelty

An invention is considered new under the EPC if it does not form part of the state of the art (Art. 54 (1) EPC). The state of the art is everything that has been made available to the public by written or oral description, by use or in any other way before the filing date or priority date of the European patent application (Art. 54 (2) EPC). For the examination of novelty, European patent applications are also considered to be state of the art if their filing date or priority date is before the filing date or priority date of the application to be examined and which were published on or after this date (Art. 54 (3) EPC) . This serves in particular to exclude patents on the same subject but with a different seniority. It corresponds to the first to file principle that if two patent applications are made for the same invention, the one who applied for it first receives the patent.

Inventive activity

According to the EPC, an invention is considered to be based on an inventive step if it is not obvious to a person skilled in the art from the prior art (Art. 56 EPC).

The “specialist” is someone who is experienced in the field, has average knowledge and skills, and who is informed about the generally accepted state of knowledge in the relevant field at a given point in time. (Guidelines for Examination in the European Patent Office; Status: April 2010)

The expression "in an obvious way" denotes something that does not go beyond the normal technological development, but simply arises without further ado or consequently from the previous state of the art, ie something that does not require the exercise of a skill or ability that goes beyond the extent that can be assumed by a specialist. (Guidelines for Examination in the European Patent Office; Status: April 2010)

For the assessment of inventive step, earlier applications under Art. 54 (3) EPC (see above under novelty) are not taken into account.

Commercial applicability

An invention is considered to be industrially applicable if its subject matter can be manufactured or used in any industrial field (Art. 57 EPC). In order not to hinder the medical activity of doctors, processes for the surgical or therapeutic treatment of the human or animal body and diagnostic processes carried out on the human or animal body are not considered industrially applicable inventions (Art. 52 (4) EPC) ). However, products for use in any of these processes (for example, surgical instruments or remedies ) are patentable.

Procedure

The grant procedure extends from the patent application to the grant of the patent or to the rejection or withdrawal of the application. This can be followed by an objection procedure and / or a complaint procedure.

registration

The granting process begins with the filing of a patent application.

European patent applications can be submitted in writing by direct delivery, by post or through technical messaging facilities at the EPO filing offices in Munich, The Hague or Berlin. The EPO's Vienna office is not a filing office.

European patent applications can also be filed with the central industrial property office or with other competent authorities of a contracting state if the national law of that state allows it.

According to Art. 78 (1) EPC, a European patent application must contain at least:

  • an application for the grant of a European patent,
  • a description of the invention,
  • one or more patent claims,
  • the drawings to which the description or claims refer,
  • a summary.

If a priority is to be claimed for the application, the date of application and the country of the priority application must also be stated with the application.

The filing fee and the search fee must be paid within one month of filing the application (Art. 78 (1) EPC).

In the application for the grant of a European patent, the contracting states in which protection is sought for the invention must be named (Art. 79 (1) EPC). A designation fee is payable for each designated contracting state (Art. 79 (2) EPC), but a maximum of seven designation fees (thus all contracting states are deemed to be designated).

A European patent can also be requested by an international application under the Patent Cooperation Treaty ( Patent Cooperation Treaty PCT ) and introducing the regional EP-phase after completion of the international phase.

Incoming inspection

After the registration has been received, the entrance office will check whether a filing date can be allocated to it. For this purpose, the registration documents must contain the following (see Art. 80, 90 and R. 40 Guideline A-II, 4.1):

  • an indication that a European patent is being applied for,
  • Information that allows the applicant to be identified and
  • a description or reference to a previously filed application.

It is not necessary to submit claims for a filing date to be granted. These can be submitted within two months of filing the application or following a request by the EPO.

Once the filing date has been set, the Receiving Section will check whether the filing and search fees have been paid in good time and whether the translation of the application into the language of the proceedings has been filed in good time.

Formal check

The initial examination is followed by a detailed formal examination (cf. Art. 91 EPC (deleted)) in order to determine whether the patent application complies with the formal requirements of the EPC and its Implementing Regulations. The formal requirements include, for example, paper format, legibility or scannability and payment of fees. Furthermore, it is checked whether the applicant is entitled to conduct the grant procedure himself or whether he has to appoint a representative (section representation).

Research

The research begins parallel to the formal check, i. H. the search for the state of the art relevant to the patent application (cf. Art. 54 EPC). The results of the search are summarized in the form of a search report and communicated to the applicant (Art. 92 EPC). The search report contains the source information (usually publication numbers of patent documents, occasionally also articles from specialist journals, internet sources or quotations from textbooks) and evaluates them according to their relevance for the respective claims of the patent application.

Publication of the patent application

The European patent application is published 18 months after the filing date or, if a priority has been claimed, the filing date of the priority application (Art. 93 EPC). If the search report is already available by then, it will be published at the same time (A1 font), otherwise only the application (A2 font) and then later the search report (A3 font) will be published.

From the time the patent application is published, the patent proprietor enjoys provisional protection (Art. 67 EPC). In Germany, this means that the applicant can claim appropriate compensation if someone uses his patent-pending invention. However, a claim for omission only arises when the patent is granted.

The publication of the search report begins a six-month period for filing the request for examination and paying the examination fees and designation fees (Art. 94 and 79 (2) EPC).

Substantive examination

If a request for examination has been submitted in good time and the examination fees have been paid, the examination will be carried out to determine whether the content of the patent application meets the conditions listed above (technicality, novelty, inventive step, commercial applicability) (Art. 96 EPC). The documents listed in the search report are primarily used to examine novelty and inventive step.

If the examiner considers that the conditions are not met, he will inform the applicant accordingly. This notification must contain the reasons which, in the opinion of the examiner, prevent the grant of a patent.

The applicant can then respond to this communication by trying to convince the examiner with arguments and / or by changing the claims and the description in order to allay the examiner's objections.

Grant or rejection

Decisions on granting or rejecting a patent application (Art. 97 EPC) are made by an examining division consisting of three examiners and not solely by the examiner who was in charge of the substantive examination.

Before the examining division decides to grant the European patent, it informs the applicant accordingly and attaches to this communication the text in which it intends to grant the patent (R. 71 (3) EPC). Within a period of four months, the applicant must pay the grant and printing fee and submit a translation of the claims into the two official languages ​​of the European Patent Office, which are not the language of the proceedings. If he does so in good time, this is deemed to be consent to the version intended for issuance.

Publication of the patent specification

At the end of the grant procedure, the reference to the grant of the patent and the patent specification are published (Art. 98 EPC). The patent specification contains the version of the description, the claims and the drawings on which the grant is based.

Only from the time of the publication of the grant does the patent proprietor enjoy full legal protection of the patent (Art. 64 EPC). In Germany, the patent holder can forbid anyone to manufacture, offer, market or use an object protected by a patent or to import it for one of these purposes without his consent. In the case of a process protected by a patent, the patent holder can prohibit the use of the process or offer it for use. In addition, in this case the protection of the patent extends to the "products directly manufactured by the process" (Art. 64 (2) EPC). The patent proprietor's approval is usually given by granting a license against payment of license fees.

Objection

Within nine months of the publication of the notice that the European patent has been granted, anyone can file a written opposition to the European patent office (Art. 99 (1) EPC). According to Art. 100 EPC, the opposition can only be based on the fact that

  • the subject-matter of the European patent is not patentable, e.g. does not meet the above conditions,
  • the European patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, or
  • the subject matter of the European patent goes beyond what was originally disclosed.

The opposition can be directed against the entire patent or just against specific claims.

The objection procedure is initially conducted in writing. However, since both the opponent (s) and the patent owner usually request an oral hearing if their request (for revocation or maintenance of the patent) is not granted, the opposition proceedings usually end with an oral hearing at which all parties involved represent their point of view again and the opposition division makes a decision. According to Art. 102 EPC, this decision can be:

  • the rejection of the opposition, i.e. the maintenance of the patent in unchanged form,
  • the revocation of the patent to the extent contested, or
  • the maintenance of the patent as amended with amendments to the claims made by the patentee during the opposition proceedings.

complaint

Decisions by the Receiving Section, the Examining Divisions, the Opposition Divisions and the Legal Division of the European Patent Office can be appealed against (Art. 106 (1) EPC). According to Art. 107 EPC, however, an appeal can only be filed by someone who

  • was involved in the proceedings that led to the contested decision and
  • is adversely affected by this decision, d. This means that the decision did not correspond to his request.

Standard examples of complaints are:

  • Complaint by the applicant against a rejection of the application
  • Appeal of the patent proprietor against a revocation of the patent in opposition proceedings
  • Opponent's appeal against the maintenance of the patent.

If the patent is maintained in the amended scope, both the patent proprietor and the opponent may file an appeal if their requests (maintenance or revocation of the patent) have not been granted.

Appeal proceedings are conducted before the Boards of Appeal of the European Patent Office . These are comparable to courts and have a certain degree of independence (e.g. the President of the EPO has no authority to issue instructions to members of boards of appeal) (Art. 23 (3) EPC: "The members of the boards are not bound by instructions in their decisions and are only subject to this Convention . ")

Like the objection procedure, the appeal procedure is initially conducted in writing, but ends with an oral hearing at the request of one of the parties involved. This is usually the case if in unilateral proceedings (only the applicant is a party to the proceedings) a rejection of the patent application is intended, and in bilateral proceedings (patent owner - opponent) almost always, since both sides usually submit such a request. According to Art. 111 EPC, the Board of Appeal can

  • decide on the matter, for example on granting the patent or rejecting the application, revoking the patent or maintaining the patent in unchanged form or in a changed scope, or
  • refer the matter back to the EPO department that took the contested decision for further decision. In this case, the specifications of the Board of Appeal are binding for this body.

stand-in

No representation is required to submit an application. Only natural or legal persons who are domiciled or have their seat in a member state of the European Patent Organization can take further action before the European Patent Office. Non-residents must use a representative - for example a patent attorney - who must be admitted to the proceedings before the EPO. These so-called "professional representatives" are entered in a list maintained by the EPO and are qualified to carry out the procedure before the EPO, since they have a technical degree and also demonstrate knowledge of European patent law (specifically: the EPC) by taking the "European qualifying examination" have to. Lawyers who are admitted to practice in one of the EPC member states are also entitled to represent after registration before the European Patent Office (however, they are not entered on the list of professional representatives) (Art. 134 (8) EPC).

Divisional applications

A European divisional application can be filed for a European patent application (parent application) as long as it is pending. The procedural law for submitting divisional applications was changed significantly in 2010, but the deadlines in particular were repealed in 2014.

Origin of the patent applications

Almost half of the European patent applications come from the Member States. The United States and Japan together account for nearly 40% of registrations.

Country proportion of
United States 24.5%
Germany 18.7%
Japan 14.8%
France 6.6%
Netherlands 5.0%
Switzerland 4.4%
Great Britain 3.6%
Korea 3.1%
Italy 2.9%
Sweden 2.3%
Rest of the EPC member states 7.5%
Other 6.6%

In 2009, 134,542 applications were submitted (8.3% fewer than in the previous year), 102,000 examination procedures were completed and 51,969 patents were granted. The following companies were particularly active (more than 1,000 patent applications submitted):

Companies Registrations
Philips 2,556
Siemens 1,943
BASF 1,699
Samsung 1,337
Robert Bosch 1,284
LG Electronics 1,221
Panasonic 1,020

See also

literature

  • Matthias Brandi-Dorn, Stephan Gruber, Ian Muir: European and International Patent Law. 5th edition, CH Beck, 2002, ISBN 3-406-49180-4 .
  • Lise Dybdahl-Müller: European patent law. 3rd edition, Carl Heymanns, 2009, ISBN 3-452-25682-0 .
  • Margarete Singer, Dieter Stauder: European Patent Convention. 6th edition, Carl Heymanns, 2013, ISBN 978-3-452-27765-7 .
  • Jochen Ehlers, Ursula Kinkeldey (Ed.): Benkard : European Patent Convention. Comment. 2nd edition, CH Beck, Munich 2012, ISBN 978-3-406-60579-6 .
  • Friedrich-Karl Beier, Kurt Haertel, Gerhard Schricker , Joseph Straus (eds.): European Patent Convention, Munich Community Commentary. Carl Heymanns, 1984 ff. (2014 to 30th delivery), ISBN 3-452-19412-4 (in deliveries).
  • Tobias Bremi: The European Patent Convention and Proceedings before the EPO. 1st edition, Carl Heymanns, September 2008.

Web links

Individual evidence

  1. (Upper / lower case according to EPC, including Art. 2)
  2. Oj. EPO 2013 501 . epo.org. Retrieved May 10, 2020.