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
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
History
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 about 100,000 patent applications currently being filed
each year. 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 responsibilites assocaited 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 will only become a member of the EPC on March 1, 2007. Croatia
and the former Yugoslav Republic of Macedoniahave been invited to join the EPC.
EPC Member States
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• Austria • Belgium • Bulgaria • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Iceland • Ireland • Italy • Latvia • Liechtenstein • Lithuania • Luxembourg • Malta* • Monaco • Netherlands • Poland • Portugal • Romania • Slovak Republic • Slovenia • Spain • Sweden • Switzerland • Turkey • United Kingdom |
 |
 EU and EPC member EPC member (not EU) EPC extension country (not EU) no EU or EPO association |
Although not members of the EPO, arrangements have been
made so that protection can also be extended to Albania, Bosnia and Herzegovina, Croatia, The Former Yugoslav Republic of Macedonia and Serbia and Montenegro.
* Malta joins the EPC effective March 1, 2007
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. Moreover, as reported by our July 1997 Newsletter and our August 1999 Newsletter, the EPO has been reducing its official fees over time, thereby making it an even more attractive option for protecting inventions in Europe. 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.
Languages Used
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 then becomes incumbent upon 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. Alternatively, applications can be filed and prosecuted in French or German.Procedure at the European Patent Office
Procedurally, the practice before the European Patent Office 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 European Patent Office will issue a Search Report identifying the most relevant prior art which an Examiner at the European Patent Office 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. 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. After the patent is granted, the patent must be translated and official fees must be paid for the various national patent offices where the applicant still desires to obtain protection. This can be an expensive undertaking, especially if the application is lengthy. 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
1. Novelty
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
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(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) there is no geographic limitation with respect to where use or oral disclosure of an invention may lead to it becoming public, so that an oral disclosure, for example, any where in the world may act as a bar to the valid grant of a European Patent, -
(c) 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 -
(d) 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.
The particular statutory wording adopted with respect to pharmaceutical inventions is an example of the compromise drafting noted above. Indeed, it was stated at the time that the aforementioned restrictions were to make it clear that a known substance, which, since it formed part of the prior art, was no longer patentable in its own right, could nevertheless be patented for the first medical use in a method for treatment of a human or animal body by surgery or therapy. However, it was to be understood that a further patent could not be granted if a second medical use were found for the same substance.
Thus, so far as compounds having no "previous medical history" were concerned, it quickly became the practice of wording the claims in the form of "Compound X for use in treating Y."
Of course, this was of little help with respect to a second medical use. However, in spite of the compromise noted above, the member states all had their own views with respect to the patentability of a second medical use of a known compound. Then the Swiss Patent Office allowed claims in the form of "The use of compound X for the manufacture of a medicament for treatment of disease Y." This formulation of a claim for a second medical use became known as the "Swiss Formulation." The EPO Board of Appeals subsequently approved of Swiss Formulation claims.
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 European Patent Board of Appeals in this area have been consistent with those of the United States Patent and Trademark Office (USPTO). 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.
Computer Software Related Inventions - Notwithstanding specific prohibitions on the patentability of computer programs, mathematical methods and mental acts, as a whole, the European Patent 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 United States Patent and Trademark Office. While the Board of Appeals has given a rather narrow construction to the prohibition on the protection of computer programs as such found in the European Patent Convention, the Board of Appeals has had a tendency to find that certain computer-related inventions were merely a computerized version of mental acts, and, thus, unpatentable for that reason. A recent case entitled Editable Document/IBM dealing with a computer-related invention is discussed elsewhere.
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. 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.
Summary
In summary, the European Patent Office 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 European Patent Office 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 European Patent Office for most inventions outweighs (i) the costs of filing multiple independent applications before national patent offices and (ii) the pitfalls noted above.
