During several years the European Union (EU) has been working over the creation of a single EU patent system, which would be applied on the basis of the international treaty.
What are the most important peculiarities of the new patent system?
The new EU patent system offers applicants another version of the procedure for obtaining a patent.
On the one hand, it allows, as before, confirming the European applications for which the patent has already been issued – a traditional “European patent” in each of the chosen countries (38 countries totally).
On the other hand, the applicant now can file an application with the EPO on the extension of the protection provided for the European applications with the already obtained patent to 27 EU countries – a new “single patent” in the countries, which are the members to a new EU patent system.
Currently, the peculiarity of the procedure for obtaining a European Patent (EP) is that the obtained document of protection does not provide the ultimate protection in the majority of the member countries of the European Patent Convention (EPC). In order to complete the patenting procedure it is necessary to complete the process of the so-called validation – the presentation of the translation of the patent documentation into the correspondent language to the national patent offices. Keeping the European patent valid, all other legally significant actions, as well as the court proceedings take place in each of the countries of action chosen by the applicant, according to the national procedure.
What is necessary to do to obtain a European patent?
1. To create an invention, which is new, has an inventive level and industrial applicability.
2. To draw up a description of the invention and file a correspondent application to the national patent office.
3. Before the expiry of 12 months from the date of filing an application with the national patent office it is necessary to file an International (PCT) or European application. However, in order to file a European application, the applicant who is not an EU citizen or who does not have a location in the member countries of the EPC is obliged to use the services of a European patent attorney. If the applicant has a previously filed PCT application, then it is necessary to transfer it to the regional (European) phase, before the expiration of 31 months from the priority date.
4. After the consideration of the application, the European Patent Office shall issue a search report and publish the application.
During the whole procedure, the applicant has the right to benefit from the procedure of the temporal legal protection in the chosen states, having presented the translation of the claims into the correspondent languages to the indicated countries.
Depending on the search results, the applicant shall make a decision to carry out an examination of the application or to terminate the registration procedure.
The examination of the application lasts from 2 to 6 years from the date of filing the application. At the same time, the annual fees shall be paid to keep the application in force. If the examination is successful, then after its completion, the European Patent Office shall issue a patent.
5. After the issuance of a European patent, it will be in effect automatically in the following countries: Germany, France, the Great Britain, Switzerland, Monaco and Luxembourg (this does not exempt from paying annual fees in these countries).
The obtained patent is subject to validating in all other member countries of the EPC. As already mentioned above, the validation of a patent means the presentation of a translation of its published test to the patent offices of the member states. At the same time, the applicant will have to use the services of the national patent attorneys in all member states.
After the validation procedure is finished, all rules similar to those that are applied in these countries for the national patents shall be applied to the European patents.
6. The payment of annual fees in the participating countries for keeping the European patent valid. In some member states this action shall be carried out only through the national patent attorneys, in other countries this procedure can be performed by a European patent attorney.
The holder of a European patent has the right to stop keeping his patent valid in any number of countries from the list of the applied countries.
Why is the European patent profitable for the applicant?
1. A simplified procedure with the paperwork in one of the official languages of the EPC (English, German, French).
2. A significant reduction of costs for patenting, as the applicant pays for the services of only one agency and only one patent attorney during the period from filing an application to the grant of a patent.
3. Due to the length of the examination procedure, the applicant has enough time to make a final decision on obtaining exclusive rights in one or another member states, depending on the current market conditions, investment opportunities, etc.
4. The European patent is “strong” due to a single procedure, qualitative search and examination, which shall be carried out by highly qualified experts of the EPO – one of the world's leading Patent Offices.
5. The European patent is equally valid in all member states: the same term of protection (20 years), the same degree of protection, in the majority of cases the same text, and also the same reasons for its cancellation.
The attractiveness of the Single European Patent:
1. A single effect on the territory of all participating member states.
2. There is no necessity to validate a patent in the member states, what means a significant cut of the costs related to these procedures.
3. The possibility of paying a single fee for keeping the patent valid. Upon that it is assumed that these fees will be significantly lower than the total value of the current national fees.
4. A single procedure for making entries in the relevant registers on the grant of licenses and the assignment of rights.
Disadvantages of the Single European Patent:
The near-complete depreciation of the national patent offices becomes the main disadvantage, as their powers, which are anyway not too large in the EPC system, will be further curtailed.
In addition, the patent holder will not be able to terminate the Single Patent in certain EU member states and will be compelled to pay appropriate annual fees for all countries. Also, the transformation of the Single Patent into national patents is not stipulated.
One of the significant disadvantages of the system of obtaining the Single Patent is that the patent can be terminated by a single procedure in the European Patent Court on the territory of all 25 member states simultaneously. In this case, the grounds for such termination may be the existence of prior, but unpublished national applications and other applications attacking the novelty of the invention, which are usually not taken into account in the examination of applications for European patents. Currently, in the event of such problems, the applicant has the opportunity to make appropriate changes to the European patent for each particular EPC member state, and in the event of the termination of the European patent in one of the countries, the patent continues to be valid without any restrictions in other countries.
Head of Department / Patent Attorney / Mechanics Engineer