European Patent Convention: Delving into Intricacies

This Guide outlines the provisions relevant to the filing of European patent applications, offering practical advice to smooth the way to a European patent. In addition, it briefly describes the post-grant procedures carried out by the EPO. It cannot, however, go into the details or specific issues of the European patent grant or post-grant procedures, and it does not constitute an official commentary on the European Patent Convention (EPC). 

The EPC has established a single European procedure for the grant of patents on the basis of a single application and created a uniform body of substantive patent law designed to provide easier, cheaper, and stronger protection for inventions in the contracting states.

European Patent

[Image Source: https://www.epo.org/about-us/at-a-glance.html]

The contracting states are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and United Kingdom. 

In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state. If its subject matter is a process, protection is extended to products directly obtained by that process. Any infringement of a European patent is dealt with by national law.

A published European patent application provides provisional protection which is no less than that conferred by a contracting state for a published national application and which must at least include the right to reasonable compensation in the event of a wrongful infringement. The standard term of a European patent is twenty years from the date of filing. Provided that the annual renewal fees are duly paid, patents remain in force for the maximum term. 

Article 63(2) sets out circumstances in which the term of a patent can be extended or a longer-term granted. This option of extension by means of a supplementary protection certificate (SPC) is intended primarily for medicinal or plant protection product patents, where the administrative approval procedure takes so long that the useful life of the patent is diminished.

European patents may also be effective in some countries that have not acceded to the EPC (extension and validation states). At present these are Bosnia and Herzegovina and Montenegro (extension states) as well as Morocco, the Republic of Moldova, Tunisia, and Cambodia (validation states).

The European procedure has not superseded the national grant procedures. So, when seeking patent protection in one or more EPC contracting states you have a choice between following the national procedure in each state for which you want protection and taking the European route, which is a single procedure that confers protection in all the contracting states that you designate. If you decide you want a European patent, you have a further choice between the direct European route and the Euro-PCT route. With the direct European route, the entire European patent grant procedure is governed by the EPC alone; with the Euro-PCT route, the first phase of the grant procedure (the international phase) is subject to the PCT, while the regional phase before the EPO as designated or elected Office is governed primarily by the EPC.

The European Patent Organisation has signed co-operation and European patent extension agreements with a number of European states that are (or at the time were) not a party to the EPC. Since 2010, it has concluded further agreements providing for European patents to have effect in non-contracting states. However, these "validation agreements" are not limited to European countries. 

As an applicant for a European patent, you thus have a simple and cost-effective way of obtaining patent protection in some countries which are not contracting states. If you request extension/validation and pay the extension/validation fee(s) in time, you can have European patent applications (direct and Euro-PCT filings) and patents extended to/validated in these countries, where they will then in principle have the same effect as national applications and patents, will be subject to national law and will enjoy essentially the same protection as patents the EPO grants for EPC contracting states. You can currently request an extension to Bosnia and Herzegovina and to Montenegro, as well as validation in Morocco, the Republic of Moldova, Tunisia, and Cambodia.

Information accessed from the official website of European Patent Office- https://www.epo.org/applying/european/Guide-for-applicants/html/e/ga_c2....

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.

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