Convention on the Grant of European Patents (European Patent Convention) – 1973
The European Patent Convention (EPC) is a multilateral treaty signed in 1973, creating an unitary legal granting regime for European patents that is managed by the European Patent Organisation also instituted by the treaty. The EPC is not an act of the European Union but it represents the intergovernmental agreement between the contracting parties (European and non-European Union States). This means that there is no link between the EPC's system and the European law or institutions.
The EPC harmonizes the application procedure for granting patents within the contracting parties. An European patent application can be filed with the EPO or a competent national patent office in any official language of EPC States but but the application must be prosecuted in one of the EPC's official languages: English, German or French. The applicant must designate the contracting States in which he or she wants to have patent rights and once the patent is granted, it will be valid in all designated States. In particular, the European patent takes effect when the mention of its grant is published in the European Patent Bulletin. If the patent is not drawn up in one of the official languages, the contracting States can require a translation to the proprietor in order to avoid that the patent be void.
According to article 52, the patents will be granted if the inventions, in all fields of technology, are new, involve an inventive step and are susceptible of industrial application. However, the EPC provides for some exceptions that exclude the patentability of some inventions such as those contrary to “ordre public” or morality. Moreover, the Convention states that some activities (for example discoveries, scientific theories and mathematical methods) are not patentable because they are not regarded as inventions. Any person from the public can oppose an European patent before the EPO within 9 months of the date of grant of that patent. The opposition can be based on 3 grounds:
- the patent is not patentable
- the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
- the patent extends beyond the content of the application as filed
At the end of the opposition procedure, the patent can be maintained as granted, maintained in an amended form or revoked. The above described prosecution and opposition procedures provide for an unitary system that allow to reduce the costs of filing an application or an opposition in every country and the costs of translation. However, enforcement of the European patents is conducted on a country-by-country basis. As a matter of fact, ownership, renewal, infringement of patents are remitted to the national law and courts. Also the validity matters are in the competence of national jurisdictions except for the nine months after the grant of the patent in which oppositions can be filed before the EPO or the national courts.
European protection of certain sectors
Although an European Union general discipline of patents does not exist, some sectors have received protection throughout European legislative acts. The main areas covered are:
- topographies of semiconductor products
- services based on, or consisting of, conditional access (e.g. pay-TV and radio, video, audio services on demand)
- plant varieties
- biotechnological inventions
Commission Communication - Enhancing the patent system in Europe [COM(2007) 165 Final]
This Communication tries to draw conclusions from a consultation launched by the EC in 2006 and concerning the future of patent policy in Europe. The Commission acknowledges that the EPC's regime creates a non-unitary regime of patents that provokes a lack of legal certainty and higher costs undertaken by the involved parties than those present in other countries (for example U.S.A and Japan). These effects are due to the bundle of national patents created by the EPC that put disputes on European patents under national law and procedures. As a matter of fact, the lack of a single jurisdiction has 4 main effects on the jurisdictional system:
multiple litigation and high costs: the same issue can be brought before the national courts of several countries and this provokes higher legal expenses inconsistencies: courts deal with cases and decide according to national laws, creating disparities within the EPC contracting States choice of forum: parties tend choose the jurisdiction that is more likely to favour their interests
For these reasons, the EC supports the creation of a Community patent and EU-wide patent court system in order to have a cost-effective and competitive system of patents in Europe. These goals must be achieved also throughout measures that guarantee the high quality of European patents, support small businesses by awareness-raising activities, improve technology and knowledge transfer and strengthen the enforcement of patent rights.
A Community Patent
Since the 1970s the European Union has worked on different proposal aimed at the creation of an unified patent system operating throughout centralized application, opposition, limitation, revocation and infringement procedures. A Community patent would reduce the costs for patents in terms of filing applications and translation, guaranteeing an uniform patent protection to patents within the European Union. Moreover, the EU proposals envisaged the establishment of a Community Patent Court, under the aegis of the ECJ, in order to fix the flawed system of litigation resulting from the EPC's regime of national patents.
All the European attempts to create an unitary regime for patents have proved to be unsuccessful because of the lack of political agreement on some issues such as the translation of the claims in the patents and the over-centralisation of the proposed jurisdictional system. In particular, the most controversial aspects regarded the legal validity of the translation and the effects of mistranslations. This difficulties to find a compromise on the translations' field has had important repercussions over the Lisbon Treaty that set the IPRs under the ordinary legislative procedure but with the exceptions of language arrangements subject to unanimity (art. 118 TFEU).
In 2011, the ECJ ruled that the last EC's proposal for an unified patent system is incompatible with the EU law. According to the ECJ, “the envisaged agreement, by conferring on an international court which is outside the institutional and judicial framework of the European Union an exclusive jurisdiction to hear a significant number of actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field, would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law and the Court of its powers to reply, by preliminary ruling, to questions referred by those courts”.