The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention (EPC), is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. Once granted, a European patent becomes equivalent to a bundle of nationally-enforceable, nationally-revocable patents, except for the provision of a time-limited, unified, post-grant opposition procedure.

Background

There is currently no single European Union-wide patent. Since the 1970s, there has been concurrent discussion towards the creation of a Community Patent in the European Union. In May 2004 however, this has led to a stalemate and the prospect of a single EU-wide patent is receding.

The EPC is separate from the European Union, and its membership is different: Switzerland, Liechtenstein, Turkey, Monaco, Bulgaria, Romania and Iceland are members of the EPO but are not members of the EU, while the opposite is true for Malta. The EPC provides a legal framework for the granting of European patents, via a single, harmonized procedure before the European Patent Office. A single patent application may be filed at the European Patent Office at Munich, at its branches at The Hague or Berlin or at a national patent office of a Contracting State, if the national law of the State so permits. This latter provision is important in countries such as the United Kingdom, in which it is an offence for a UK resident to file a patent application for inventions in certain sensitive areas abroad without obtaining clearance through the UK Patent Office first.

History

In 1973, the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents took place and the Convention was then signed in Munich (the Convention is sometimes known as the Munich Convention). The signature of the Convention was the accomplishment of a decade-long discussion during which Kurt Härtel, considered by many as the father of the European Patent Organisation, and François Savignon played a decisive role.

The Convention entered into force on 7 October 1977 for the following first countries: Belgium, Germany (then West Germany), France, Luxembourg, Netherlands, Switzerland and United Kingdom, and on 1 May 1978 for Sweden. However, the first patent applications were filed on 1 June 1978 (date fixed by the Administrative Council which held its first meeting on 19 October 1977). Subsequently, other countries have joined the EPC.

The Convention is now (as of July 2006) in force in 31 countries. List of current EPC Contracting States ^*

In addition to the Contracting States, States may also conclude a cooperation agreement with the EPO, known as an extension agreement. The state then becomes "extension state", which means European patents granted by the EPO may be extended to those countries by the payment of additional fees and completion of certain formalities. The following 5 states have concluded extension agreements with the EPO, so that in effect, these states can be designated as well in a European patent application: Albania, Bosnia and Herzegovina, Croatia, Former Yugoslav Republic of Macedonia, and Serbia and Montenegro (formerly known as the Federal Republic of Yugoslavia).

A diplomatic conference was held in November 2002 in Munich to revise the Convention, amongst other things to integrate in the EPC new developments in international law, especially those of the TRIPs Agreement and of the Patent Law Treaty, and to add a level of judicial review of the Boards of Appeal decisions. Greece deposited its instrument of ratification on December 13, 2005, and was the fifteenth Contracting State to ratify or accede to the revised Convention, known as the EPC 2000. EPO web site, "Legislative Initiatives in European patent law" microsite, EPC 2000, Status of accession and ratification The EPC 2000 will thus enter into force on December 13, 2007 at the latest. Official Journal of the EPO, 2/2006, Notice from the European Patent Office dated 27 January 2006 concerning deposit of the fifteenth instrument of ratification of the EPC Revision Act

The EPC 2000 could enter into force earlier, that is "on the first day of the third month following the deposit of the instrument of ratification or accession by the Contracting State taking this step as the last of all Contracting States, if this takes place earlier". A Contracting State that will not have ratified or acceded to the EPC 2000 at the time of its entry into force will cease to be party to the EPC as from that time.

Content

The content of the Convention includes several texts in addition to the main 178 articles. EPC ^* These additional texts, which are integral parts of the Convention, are

• the "Implementing Regulations" or, in full, the "Implementing Regulations to the Convention on the Grant of European patents"; EPC Implementing Regulations ^*
• the "Protocol on Recognition" or, in full, the "Protocol on Jurisdiction and the recognition of decisions in respect of the right to the grant of a European patent"; EPC Protocol on recognition ^*
• the "Protocol on Privileges and Immunities" or, in full, the "Protocol on Privileges and Immunities of the European Patent Organisation"EPC Protocol on Privileges and Immunities ^*;
• the "Protocol on Centralisation" or, in full, the "Protocol on the Centralisation of the European Patent System and on its Introduction"; EPC Protocol on Centralisation ^* and
• the "Protocol on the Interpretation of Article 69 of the Convention". Protocol on the Interpretation of

Substantive patent law and procedural provisions form very important parts of the EPC.

Substantive patent law

The EPC contains substantive patent law relating to the pre-grant prosecution of patent applications, the grant of European patents and the opposition to granted patents. The EPO does not deal with infringement proceedings relating to European patents.

One of the most important articles of the Convention, , entitled "Patentable inventions", states: "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step". This constitutes the basic patentability provision under the EPC.

However, the EPC provides further indications on what is patentable, by introducing exceptions. There are exceptions by virtue of the nature of the patent system (Article 52(2) and (3)) and exceptions by virtue of policy (Articles 52(4) and 53). Discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers and presentations of information (exceptions by virtue of the nature of the patent system) are excluded from patentability only to the extent that the invention relates to those areas as such. These exceptions have been introduced as a way to illustrate what cannot be patentable due to the nature of the patent system (a patentable subject-matter should usually be directed to some physical product or process). The European Patent Office interprets this as requiring that the features providing the inventive step must be outside those areas.

Other exceptions include methods for treatment of the human body by surgery or therapy, diagnostic methods practised on the human or animal body (), inventions contrary to "ordre public" or morality () and plant or animal varieties and essentially biological processes for the production of plants an animals () (exceptions by virtue of policy). The EPO is reluctant to use the public policy exceptions as it believes that this is best left to national law - being granted a patent should not be viewed as an endorsement of one's commercial plans.

Procedure

The Convention also includes provisions setting out filing requirements of European applications, the procedure up to grant, the opposition procedure and other aspects relating to the prosecution of patent applications under the Convention.

European patent applications may be filed in any official language of an EPC contracting state (subject to certain requirements), but patent applications are prosecuted in the three official languages of the EPO - English, French and German (if an application is filed in a language other than the official languages, a translation must be filed into one of the three. The filing fee is reduced to offset the additional cost of the translation). The official language of filing (or of the translation) is adopted as the "language of proceedings" and is used by the EPO for communications.

European patent applications are prosecuted in a similar fashion to most patent systems - the invention is searched and published, and subsequently examined for compliance with the requirements of the EPC.

On grant, the European patent must be brought into effect in the European countries in which protection is actually required. In some countries, if the language of proceedings (the language in which the patent was published) is an official language, then the process is a formality or the patent is automatically effective without procedural steps. Otherwise, a translation into a local language must be filed.

At this point, the European patent is effectively treated as a bundle of national rights, and national law applies within the limit of the EPC. For instance, specifies the only grounds on the basis of which a European patent may be revoked under national laws . This has particular relevance to renewal, revocation, and infringement.

The only centrally executed procedure after grant is the opposition procedure, governed by the EPC, which allows third parties to file an opposition against a European patent within 9 months of the date of grant of that patent. It is a quasi-judicial process, subject to appeal, which can lead to maintenance, maintenance in amended form or revocation of a European patent. It is possible that a European patent will be the subject of litigation at a national level (for example an infringement dispute). National courts may suspend such infringement proceedings pending outcome of the opposition proceedings to avoid proceedings running in parallel and the uncertainties that may arise from that.

A principle problem with obtaining patents in a number of European countries is that a number of different languages are utilised across the European countries and there is substantial expense in preparing translations into each of those languages. While the EPC does not totally overcome the need for translations (since a translation may be required after grant to validate a patent in a given country), it does centralise the prosecution in one language and defers the cost of translations until the time of grant. The London Agreement aims to further reduce the burden of translation by limiting the number of translations required. However, that agreement has not yet entered into force.

Notes