Talk:European patent law

Relationship of national and European patents

I have aseveral questions about EP patents. (I'm a U.S lawyer.)

1. I commonly encounter EP "patents" that were filed designating all EP member states (or at least many of them), then issue and mature into a "national grant" and right to exclude in only a few. Why is that? In ALL jurisdictions of the EP, is it true that the maximum formality required for a national daughter of an issued EP patent is filing a translation? Do any EP member states require anything further - some kind of confirmatory letter to the national patent office requesting a national grant of the EP patent, paying a fee, etc. etc.

On the other hand, if the EPC forbids all national formalities except translation (if so, what section of the convention?), how come EP patents so often have national effect in so few jurisdictions? For example, why would an EP patent be effective in Germany but not Austria or Switzerland, or vice versa, if the only formality is a German translation?

This arises because all states can be designated in an EP application by the payment of seven times the designation fee - currently 560Euros. So, many applicants simply pay that relatively small amount of money in order to keep the option open to validate in many states. A translation must be filed in most countries to obtain a patent, and the preparation of that translation may be very expensive, which is why it is at that point that applicants narrow down their choice of countries. Some states require that an Applicant file an address for service in that country and there may be formalities applicable to certain countries. The validation of granted patents is handled by attorneys in each country and so I am not aware of the details of the process in countries other than the UK (where it is advisable, but not required to file a UK address for service, and where a translation into English is required, but no fee is payable).

A further consideration when validating a patent is the payment of renewal fees - after grant fees are payable in each jurisdiction in which the patent is required to be in force, and so the more countries selected, the higher the fees. So, I think the answer to your question is financial - each extra country may require an additional translation, and certainly requires extra renewal fees. Kcordina ^Talk 11:11, 10 July 2006 (UTC)

Ah, "validation." I just found this, the EPO's set of guidelines for national validation: [2] Here's the first two paragraphs of the EPO's guidelines:

The centralised, fundamentally autonomous and uniform procedure for the grant of European patents ... is linked in a special way with the national patent law of the member states of the European Patent Organisation, and at a number of stages it "interfaces" with the national legal systems...

The salient characteristic of these interfaces is that, at the outset or in the course of the European grant procedure or after it has been completed, the patent applicant or proprietor may or must take certain steps before the patent authorities of the contracting states in order to acquire or maintain certain rights in those states. It is therefore of primordial importance for all European applicants and proprietors to be familiar with and carefully observe such procedural steps laid down by national law and the conditions for their validity, if full advantage is to be derived from the European patent system and loss of rights is to be avoided.

I can't read the entire set of guidelines now, but it appears to be highly relevant to the issues we're trying to resolve. Boundlessly 10 July 2006

(I note that the UK seems to be a special case: Section 77 of the UK Patents Act provides that a "European patent (UK)" has full national effect so long as it's in English and designates the UK, with no further formalities or fees. Extrapolating from the way things are normally done in the U.S., it seems that if the EPC and the issuance of an EP B1 "patent" were fully self-executing in all designated member states, section 77 would not have been necessary. Thus my question.)

I don't know, but have good grounds to suspect, that such sections arise from the pecularities of getting European matters such as the EPC incorporated into national law. Kcordina ^Talk 11:11, 10 July 2006 (UTC)

These practical consequences - combined with the apparent absence of anything to the contrary in the text of the EPC - suggest to me that the "default" rule of the EPC - in absence of something in a member state's national law equivalent to UK Section 77 - is that a member state does have the option to require some additional formalities after issuance of the EP B1, before the member state grants national rights, and that if those formalities are not observed, then the EP B1 grant is void ab initio in that state. True or false?

Off the top of my head, I believe you are right, but cannot quote anything to support that view. I expect the ratification process that brings the EPC to life in each country requires the introduction of an equivalent to s77 in each national law.Kcordina ^Talk 11:11, 10 July 2006 (UTC)

I would tend to disagree. To me, EPC Contracting States cannot provide additional formalities which would go beyond Art. 65(1) (translation) and 65(2) (fee for publishing the translation). It means in practice that the manner and the form in which the translation is to be supplied to "central industrial property office" of the Contracting States which require a translation may vary (for instance the Netherlands require that the translation must be certified by a Dutch patent attorney), but no Contracting State may (lawfully) provide that a patentee files a translation of the prior art documents cited in the search report, or a translation of all the correspondence filed during prosecution for instance. That would go against Art. 65 which is, to me, an exception to Art. 64(1) and exceptions need to be construed narrowly. --Edcolins 12:27, 10 July 2006 (UTC)

2. Do member states have any leeway to apply "tougher" standards than the EPO at the time of national grant - for example, if a member state has tougher standards than the EPO on inventive step or computer software, can it subject a granted EP B1 to any substantive examination before granting national rights? Or does any tougher standard have to wait to be applied until validity is litigated in national courts?

As above. Kcordina ^Talk 11:11, 10 July 2006 (UTC)

National courts of EPC Contracting States may apply tougher standards (for instance of inventive step or patentable subject-matter) when examining the validity of a European patent during litigation (applying tougher standards can arise through a different interpretation of the EPC substantive provisions, not through additional substantive provisions). However, EPC Contracting States cannot subject a granted European patent to any substantive examination before granting national rights (see item 4 of [3]). That would go against Art. 64(1) again, and this makes the EPC very different from the PCT. --Edcolins 12:33, 10 July 2006 (UTC)

Thanks. Boundlessly 03:53, 8 July 2006 (UTC)

Effect of EPC Art 64 and 69(1)

This sentence appears not to be accurate -

However, the extent of protection conferred by a European patent is defined by Art. 69(1) EPC, [12] and takes precedence over national law. [13]

Would the following be more correct -

Pursuant to EPC Art. 69(1), the "extent of the protection" of a European patent is determined primarily by reference to the claims of the EP patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims.

During the application process, a "European patent application" is a unitary legal entity (though with some attributes that may be separated out by national jurisdiction, e.g., EPC Art. 71 (rights for individual states may be transferred separately). However, after the expiration of the oppostion period, nearly all "unitary" nature of the EP patent dissolves, and what remains is a collection of essentially-independent national patents, and ownership, validity and infringemnt of each being determined independently under respective national law. EPC Art. 64(1) provides that in each member country, the national daughter of the EP patent has the identical effect as a national patent with the identical claims would have. The EPC expressly adopts national law for all substantive attributes of a national daughter of an EP patent, with the following exceptions:

- standards for revocation - national law is expressly preempted, and grounds for revoking a national daughter are limited to five grounds specified in EPC Art. 138(1) (subject matter, enabling disclosure, and claims beyond the content of the application as filed, protection has been extended what does "protection has been extended" mean? or improper proprietor) - though each state is free to interpret the five grounds of Art. 138 under its own national law.

- infringement by the direct product of a patented process, EPC Art. 64(2)

- patent term, 20 years from the filing date EPC Art. 63(1).

All other substantive attributes of each national daughter of an EP patent, such as what acts constitute infringement (indirect and divided infringement, infringement by equivalents, extraterritorial infringement, infringement outside the term of the patent with economic effect during the term of the patent, infringement of product claims by processes for making or using, exports, assembly of parts into an infringing whole, etc.), the effect of prosecution history on interpretation of the claims, what remedies are available for infringement or bad faith enforcement (injunction, damages, attorney fees, other civil penalties for willful infringement, etc.), equitable defenses, coexistence of an EP national daugher and a national patent for identical subject matter, ownership and assignment, extensions to patent term for regulatory approval, etc., are expressly remitted to national law. E.g., EPC Art. 2(2) ("The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless otherwise provided in this Convention."); EPC Art. 63(2) (patent term extension determined under national law), EPC Art. 64(1) and (3) (EP patent conveys "same rights" as national patent, and infringment determined by national law), EPC Art. 66 (EP filing has same effect as national filing), EPC Art. 74 (ownership determined under national law).

Question - of course a national daughter of an EP patent can be invalidated for lack of novelty or inventive step (and one hopes, fraud during prosecution)? How does that relate to the five grounds of Art. 138? Is it that the ENTIRE EP patent can be revoked for one of the five Art 138 grounds, but only the national daughter can be revoked on grounds arising under national law?

As a U.S. lawyer, all I can do is read the plain text of the EPC, through American eyes, and note that the current content of the article appears to conflict with that plain meaning. What it actually means under European law I'll have to leave to an EP lawyer who is licensed to have an opinion, and actual experience litigating or licensing, or otherwise knowledgable about the post-grant economic exploitation, of EP patents. (If you have a prosecution-only background, please be careful not to opine beyond your expertise.) Thanks. Boundlessly 04:13, 8 July 2006 (UTC)

Art 138 is the law applicable to the post-grant revocation of the national parts of EP patents, by national courts or patent offices, whoever has the jurisdiction under national law. The principle for this is to provide legal certainty for the applicant/proprietor and to equalise the law surrounding revocation in each state. So, in theory, a granted EP patent will either stand or fall consistently in each state. The grounds stated in Art 139 138 are the sole grounds for revocation that can be raised in national proceedings. The first of grounds, that the patent does not comply with Arts 52 to 57, covers the matter on novelty and inventive step. Art 139 also plays into this as it brings prior unpublished national rights into consideration as well. There is no European equivalent of the US fraud on the patent office provisions, however, where there has been misrepresentation of the facts during prosecution, this is usually to cover up a failing in the application and so the patent would be revoked once the true facts are apparent.

With regard to your question above re: Art 69, your proposed paragraph is an improvement. It is also worth noting that the Protocol to Article 69 is intended to provide guidance to interpretation of claims and is used by national bodies to attempt to provide an equal starting point. It is principally that protocol that is quoted by courts, rather than Art 69 itself, when interpreting claims.

An excellent book that sheds light on the EPC, in an efficient manner, is "The annotated European Patent Convention" by Derk Visser, which is an excellent reference work for dipping into bits of the EPC. Kcordina ^Talk 08:34, 10 July 2006 (UTC)

Just spotted another question - "protection extended" relates to amendment of claims during opposition proceedings - a patent may be maintained in amended form during opposition proceedings, but under Art 123(3), such amendments may not extend the protection conferred (ie. post grant amendment can only narrow, or maintain, the scope of claims). Kcordina ^Talk 08:41, 10 July 2006 (UTC)

Singer/Stauder has two excellent sections on the bordeline between European (EPC) and national laws. I copy an excerpt here:

"4. EPC provisions on European patents that take precedence over national law

The [EPC] stipulates that the following provisions applicable to European patents after grant shall take precedence over national law:

- the term of a European patent shall be 20 years from the date of filing (Art. 63(1), with the possibility of extension);

- the text of a European patent application and of a European patent in the language of the proceedings shall be the authentic text (Art. 70);

- the protection of a process patent shall extend to the products directly obtained by the relevant process (Art. 64(2));

- the extent of protection of a European patent application and of a European patent shall be determined, according to Art. 69 and its associated Protocol of Interpretation, on an exclusively European basis;

- a European patent may be revoked in a national procedure only if the conditions for its grant laid down in the EPC were not satisfied (Art. 138; Introductory remarks before Art. 52, note 7); the declaration of nullity shall in all cases be effective ex tunc (Art. 68)

"5. Application of national law

The EPC explicitly refers to the application of national law in addition to the European provisions in respect of the following:

- the exclusive legal effects of a European patent (Art. 64(1)) and the provisional protection of a European patent application (Art. 67);

- infringement of a European patent (sanctions - remedies - and procedural law, art. 64(3));

- European patent applications as objects of property (Art. 74)."

quotes from Singer/Stauder, The European Patent Convention, A Commentary, Munich, 2003, under Article 2 (page 17 and 18)

The "Introductory remarks before Art. 52, note 7" say inter alia (about the negociations in 1969 which led to the EPC):

(...) At the express request of the interested circles, however this minimum solution was replaced by a maximum approach: no country was to be allowed to invalidate the European patent by virtue of national substantive law provisions going beyond the conditions for the grant of European patents. (...) (from Singer/Stauder as well)

Hope this helps. --Edcolins 12:56, 10 July 2006 (UTC)

I think that there is a problem with terminology here. Singer/Stauder is indeed a highly respected reference, but I think that the translation from German has introduced a connotation which is misleading, at least when quoted outside of its context (I don't have the book to hand at the moment). By "precedence over national law", I don't think that it means that these provisions of the EPC directly override provisions of any national law, which is what this terminology suggests to me. That would be impossible in many States. Rather, I believe it means that there may in some cases be situations where the general rule from Article 2(2) that a European patent must in most respects have same effect as a nationally granted patent may not apply.

To put it another way, it is not really that the indicated EPC provisions take precedence over national law, but that the national law is required to implement these provisions in respect of European patents valid in that State, even though different provisions may apply to national patents. [For this purpose, I would regard direct recognition of the EPC by a State as being equivalent to an implementation in national law.]

Looking at a few of the relevant provisions and how they apply to the UK:

Article 2(2) says: "The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless otherwise provided in this Convention."

Article 69(1) says "The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims." and there is a protocol on interpretation of the article.

Neither of these articles would have any effect at all in the UK but for the provisions of the Patents Act 1977. The EPC does not provide any patent rights directly in the UK but (loosely speaking) requires the government to ensure that rights are available in conformance with what is defined in the Convention. This was done by enacting sections 77 and 125 of the Act. Section 77 says that European patents (UK) have the same effect as UK ones. Section 125(1) includes words from Article 69(1) to define protection and Section 125(3) actually gives direct effect to the protocol so that whatever version is in force at the relevant time will be used for the purpose of UK law.

As it happens, UK law is such that the specific requirements indicated all have effect equally for national and European patents, but that would not necessarily be the case since the EPC is not generally a harmonising treaty. Other international obligations aside, it would have been possible to implement it correctly having (looking now at Article 63(1)) a maximum term of 14 years for national patents but 20 years for European patents. But the 20 year period would still have to be set out in the national law. In this sense, the specific EPC Article has precedence in the sense that it would override the normal assumption that the same treatment is given to national patents and European patents. It does not actually directly override the national law, but creates an obligation on the government to provide a 20 year period of protection, even though the law relating to national patents might only provide 14.

That said, there is the possibility of judicial interpretation of provisions in such a manner as to resolve any doubt in favour of being consistent with the Convention even though the natural interpretation of the Act from a UK lawyer's perspective might be different. Most of the judicial discussion of points along these lines has been in terms of the implementation of European directives, which have a different basis in UK law. Nevertheless, many similar arguments apply and the courts are perfectly aware of the need for consistency of their actions with the EPC. They will, where possible, interpret the Act so as to give rise to the effects which are required by the Convention. They are encouraged in this by sections 91(1) and 130(7), which require judicial notice to be taken of (inter alia) the EPC and decisions of the EPO Boards of Appeal and point out certain provisions of the Act which are supposed to have equivalent effect to provisions in the EPC.

Now I've just got to think of a way of editing the article to get that idea across without making it confusing in a different way. Tim B 14:08, 10 July 2006 (UTC)

Let's be careful not to introduce a UK- or common law-centric bias in the article. Indeed, UK law requires explicit incorporation of the provisions of the EPC for the purpose of applicability, while European continental, civil law usually does not require such explicit incorporation, as far as I know. Direct applicability of international conventions are common in continental Europe and the provisions of international treaties often prevail over national law in these jurisdictions. UK seems rather the exception than the rule as far as the EPC Contracting States are concerned. --Edcolins 14:49, 10 July 2006 (UTC)

I agree - that's one of the reasons that I was having trouble thinking of a good way of adjusting the article and why I pointed out that, for the purpose of what I was saying, I regarded direct recognition of the EPC as being equivalent to a national law implementation. Somehow it needs to be clear that these are points where the provision of the EPC overrides any need for the European patent to be treated in the same way as a nationally granted patent, rather than the provision of the EPC overriding the national law per se. Putting that in a succinct way which works well for common law and civil law systems (or, perhaps more relevantly, in a meaningful way to readers from a background where the different systems apply) isn't that easy. Tim B 08:10, 11 July 2006 (UTC)

This is an excellent discussion. Thanks for teaching me. I have two responsive comments.

First, the Singer/Stauder excerpt "4. EPC provisions on European patents that take precedence over national law" quoted above confirms the understanding that I had drawn from the treaty itself - with the exception of the particular bullet points listed "that take precedence", the EPC almost entirely defers to national law for the substantive effect of national EP grants. If "the extent of protection conferred by a European patent is defined by Art. 69(1) EPC, and takes precedence over national law" is a true statement (I have no expertise to opine in either direction), a cite for the proposition has not yet been put on the table, and the "genral rule" seems to be Art. 2(2) (remitting all remaining issues to national law), with only the enumerated exceptions. On the other hand, Singer/Stauder's list is very similar to the list I had pulled out of the EPC itself, so I think we may be closing in on an accurate statement of the law there.

"The annotated European Patent Convention", Derk Visser, says:- "Since a European patent shall confer the same rights as a national patent (A64(1) and infringement of a European patent is dealt with by national law (A2(2) and A64(3)), it is accepted that a European patent will confer different protection in different contracting states. Art 69(1) tries to limit this divergence by giving guidance to national courts for the harmonisation of the historically diverging interpretations of patents. A unified interpretation ... in accordance with Art 69, will give the proprietor more legal certainty. To strengthen the provision, a protocol on the interpretation of art 69 has been appended.".

So, national law appears to take precedence, but should be guided by Art 69 to give a unified result. Kcordina ^Talk 16:06, 10 July 2006 (UTC)

(What is the effect of invalidation or infringement ruling in a national court - does that affect only one national daughter, not the whole family? Can a Dutch or Belgian court (for example) issue an injunction against infringement that has effect throughout the EPC, or even in all states that granted a national daughter?)

There is not, in general, any interaction between proceedings in individual countries - a patent may be revoked in one country, but maintained in another. There were some instances of courts issuing cross-border injunctions but that has now largely been ended. The varying speeds of litigation in different EU countries leads to a plethora of litigation strategies. Kcordina ^Talk 16:06, 10 July 2006 (UTC)

Second, I think it's absolutely crucial to explain national law implementations of the EPC. Wikipedia:Systemic bias only warns against introducing the biases of the authors. But the "bias" of the various national EP legal systems is crucial to understanding the reality of the national daughter patents. It is not an artifact of an author's "bias." The UK implementation of the EPC is indisputably a "common law" based implementation, and it would be misleading to not acknowledge and explain that fact, and its practical consequences. Of course the contrasting civil law concepts are just as important, but lack of expertise in both areas shouldn't discourage someone from writing the one in which he/she does have expertise. Less-than-universal knowledge is not "bias" in the Wikipedia sense. (This is analogous to the difference between a good legal memo that shows the application of the law to the facts, and conveys the analogies that are important to deciding real cases, and a bad legal memo that simply sets forth a bunch of quotes from prior cases without any showing of the practical effect and application of the law.) National law examples are absolutely essential if the article is to teach the most important facts that someone has to know.

Thanks all. Boundlessly 10 June

Cite form

Could we try to put cites directly in line, so you can get to the primary source in one click, rather than first a footnote and then a cite to the EPC in the footnote? (Obviously if the cite is more than a couple words, then you have to use a footnote, but can we have a bias toward in-line citations?) It's much easier to work with, and confirm the accuracy of, this

The "extent of the protection" conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims. EPC Art. 69(1) The protocol to Article 69 provides further guidance, that claims are to be construed using a "fair" middle position, neither "strict, literal" nor as mere guidelines to considering the description and drawings, though of course even the protocol is subject to national interpretation. E.g., Southco Inc v Dzus, [1992] R.P.C. 299 CA; Improver Corp. v Remington Products Inc [1990] FSR 181.

than this

The "extent of the protection" conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims. The protocol to Article 69 supports that provision and provides an aid to the interpretation of the scope of claims.

Thanks. Boundlessly 12 June

Thanks for the suggestion. I have created the template to be inserted either in the note between the <ref> and </ref> tags or directly inline: Template:EPC Article. --Edcolins 20:34, 12 July 2006 (UTC)

References

Value of EPO Appeals in Adjudication of Validity of a National Patent

In an infringement suit after an EP patent is issued, what is the precedential value of decisions of the EPO Boards of Appeal? Are Board decisions regarded as having equal weight with decisons of national courts, none at all, or something in between? For example, I can imagine a national court that is reviewing the validity of a national daughter of an EP patent simply disregarding both the decision of the EPO on a particular patent, even if the patent was approved by the Board over the very prior art at issue, and disregarding the EPO body of precedent, becuase the legal tests and factors important to a national court are simply different than those considered by the EPO. (U.S. courts overrule the U.S. Patent Office all the time.) I can also imagine a national court giving great weight to the EPO Boards. I imagine that this varies jursidiction to jurisdiction. User:Boundlessly 13 July

EPO Boards of Appeal decisions are not precedential at all upon national courts, which have exclusive jurisdiction on validity and infringement after a European patent has been granted (except during the 9 month opposition period, which can only relate to validity). However, national courts will tend to take note, and may find 'persuasive', decisions of the EPO Boards, though they can disagree with them. An important point to note is that an EPO Board of Appeal is not bound by its own previous decisions or decisions of other Boards, so conflicting decisions can arise. Conflicting decisions may be decided by an Enlarged Board decision, but this often takes several years. User: pearcedh 20 July.

Patent law statistics

The statistics section now only contains info on litigation, which is a related subject. What should be the ideal content of a statistics/numbers section?

1. removal (statistics on laws are complicated)
2. statistics regarding litigation
3. statistics regarding patent applications
4. statistics regarding parties to treaties?

I am posing it as an open question, as I have no strong preference... but would lean towards removal.... Any ideas? L.tak (talk) 13:44, 19 April 2014 (UTC)

In my opinion, any statistics about patent litigation and prosecution in Europe could make it to the section. How many European patent applications/Eurasian patent applications/national patent applications/utility models are filed, by whom? Where are patents litigated? Are there any interesting trends? etc. --Edcolins (talk) 21:54, 19 April 2014 (UTC)

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