Patent protection is essential because it allows inventors to prevent others from using, making, selling, offering for sale, or importing an invention without obtaining permission from the inventor. As part of the trade-off for receiving these exclusive rights, the inventor must disclose the details of the invention in a patent document that is made publicly available. In this way, the disclosure of new inventions is encouraged, and the fund of human knowledge is enriched.

In general, patent protection will be granted if the invention is (1) “new,” that is, the invention was not previously known to the public, (2) capable of industrial application (i.e., has utility), and (3) represents an “inventive step” over what was previously known (i.e., the invention would not have been obvious to any skilled person in the relevant field in view of what was already known).

An important difference to keep in mind between US and European law regarding patents, is that the United States uses the “first to invent” system for patents while the law applicable in each of the European Union (EU) Member States follows the “first to file” approach. This is to say that the US follows a system wherein one inventor may establish priority of invention over another inventor of the same subject matter based on date of invention, whereas in Europe, the dates of filing of the applications by the competing inventors determines priority.

• Legislation

It is important to remember that there is no EU-wide patent, and that patent protection is territorial. For Europe, this means that patents must be separately obtained in each EU Member State where protection is desired, and each of those patents is only enforceable as a general matter in the country where the patent was granted. Similarly, if a company has obtained patent protection in the United States, that protection does not extend outside of the United States territory.

Although there is no EU-wide patent available, an inventor may obtain patents in Europe through a variety of mechanisms. The inventor may either file an international application under the Patent Cooperation Treaty (PCT), a (European) regional application with the European Patent Office (EPO), or a national application in the respective EU Member State national patent office(s).

Patent Cooperation Treaty

All EU Member States are parties to the PCT, which allows an inventor to prepare and file a single international application having the same effect as a national application filed in each PCT Member State designated in the international application. PCT Member States currently number more than 130 countries worldwide. Although the PCT streamlines application filing procedures, it is important to remember that patent protection must still be obtained through national procedures, and according to national law, in each of the designated countries.

Under the PCT, a PCT International Searching Authority performs an international search and prepares an accompanying written opinion, giving the inventor useful information, at an early stage, as to the likelihood of success in obtaining a patent. If requested, an international preliminary examination may also be performed by one of the PCT authorities. PCT applications may be filed with the applicant’s PCT Receiving Office (usually the applicant’s national patent office) or directly with the WIPO International Bureau, and generally may be filed either electronically using an online application or in paper form via mail. In addition, in Europe, it is possible to use the European Patent Office (EPO) in the PCT process both as the PCT International Authority and as the designated office for the grant of the European (regional phase) patent.

European Patents

Each EU Member State is also a party to the European Patent Convention (EPC). The EPC establishes a centralized patent examination and grant process, administered by the EPO.

Under this procedure, an applicant files a single application with the EPO, which determines the patentability of the invention according to the provisions set forth in the EPC, and, as appropriate issues a “European Patent.” The application may be filed with the European Patent Office in Munich, or at its branches in Brussels, The Hague, Berlin, or at a national patent office of one of the Contracting States.

• Coverage

The term “European Patent” is misleading because even if the EPO grants a “European Patent,” the rights that are granted are not “European.” To the contrary, what is granted by the EPO is only a “bundle” of potential patent rights; the patent only has effect in the EPC Member State(s) designated in the application filed with the EPO, and even then, only after the applicant has taken the necessary steps in each designated country to “validate” the patent. This generally entails making any required translations of the application contents in the official language of the designated state(s) and the payment of any necessary fees. Each such validated patent is only enforceable in the particular Member State. Patents issued by the European Patent Office may be opposed for a limited time prior to the EPO granting the patent, and Member States may provide for separate revocation procedures under national law.

European National Patents

As an alternative to the above-noted filing routes, an applicant may also choose to seek protection separately in selected EU Member States.

Under the Paris Convention for the Protection of Industrial Property, a person or organization that filed a patent in any country that is a member of the Paris Convention can, within one year of that filing, apply for patents in other countries and claim the filing date of the first application as the effective filing date for those applications. This is important because when a company claims priority to an earlier application, the filing date of the earlier application is taken as the filing date for all other applications claiming priority to it. This means that when the prior art (body of existing knowledge in the relevant technical field) search is conducted, only disclosures that were made before the priority filing date will be considered. In practice, it allows a US company to file a patent in the US and then test the market by publishing and exhibiting its innovation for up to a year before deciding in which jurisdictions to finally apply for patent protection. Another advantage of the priority right is that patent subscription fees can be delayed by a year in each additional jurisdiction if the patent is applied for just before the end of the twelve-month priority right period.

• Guidelines

There are five guidelines for examination in the EPO: guidelines for formalities examination, guidelines for search, guidelines for substantive examination, guidelines for opposition and limitation/revocation procedures, and guidelines for general procedural matters.  Before filing a patent application with the EPO, companies should review these guidelines in detail. 

• Industrial Designs and Patents

It is possible to obtain a patent and industrial design protection for the same innovation, though it must be remembered that the protection, and the requirements for obtaining the protection, are different.  New products can have both functional and ornamental aspects.  Unlike the situation with patents in Europe, there is a harmonized EU-wide body of law on protection of industrial designs, which is administered by the Office for Harmonization of the Internal Market (OHIM), based in Alicante, Spain.  OHIM additionally administers EU trademark protection. 

• Fees

Depending on how your company decides to obtain its patent protection, the fees will vary.  The fees required for pursuing protection in Europe, including translation, attorney, and national/regional office fees, may be substantially higher than the cost of obtaining a US patent.  WIPO recommends checking the directory of national and regional intellectual property offices to get more information about a country’s specific patent fees.

• Enforcement

Patents in Europe can be enforced both civilly and/or administratively.  While there are international agreements, such as Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), that have the basic standards for effective IP enforcement procedures, under the EU’s Enforcement of Intellectual Property Rights Directive, enforcement is a Member State issue.  Under the Directive, Member States must provide measures, procedures and remedies necessary to ensure the enforcement of IPR that are fair and equitable.  All EU Member States must provide “effective, dissuasive, and proportionate” remedies and penalties against those engaged in counterfeiting and piracy. 

The abovementioned Directive has led many States to adopt national provisions on civil remedies more closely in line with “best practices” standards.  These standards include procedural protection, which covers evidence and protection of evidence, and provisional measures such as injunctions and seizure.  There is also a “right of information” that allows judges to gain access to names and addresses of those involved in distributing the illegal goods, and the details about the amount of goods involved and the prices.  Remedies include the destruction of infringing products, recall of illegal material, and permanent removal of the products from the EU market.  The legitimate patent holder may be entitled to damages and/or injunctive relief.  Thus far, there is no criminal remedy available. 

• Helpful Links

  European Patent Application:
http://www.epo.org/patents/One-Stop-Page.html

  European Patent Application Fees:
http://www.epo.org/patents/Grant-procedure/Filing-an-application/costs-and-fees.html

  European Patent Convention:
http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ma1.html

  European Patent Office:
http://www.epo.org/

  Guidelines for Examination in the European Patent Office:
http://www.epo.org/patents/law/legal-texts/guidelines.html

  Inventing the Future: An Introduction to Patents for Small and Medium Sized Enterprises:
http://www.wipo.int/export/sites/www/freepublications/en/sme/917/wipo_pub_917.pdf

  Member State Patent Protection Information:
http://www.wipo.int/directory/en/urls.jsp

Online filing:
www.epoline.org

  Patent Cooperation Treaty:
http://www.wipo.int/pct/en/texts/articles/atoc.htm

  Worldwide Patent Database:
www.espacenet.com

  Patent Information Centres:
www.european-patent-office.org/patlib/index.htm

WIPO’s FAQs on Patents:
http://www.wipo.int/patentscope/en/patents_faq.html#who_grants