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Author
Marianna Boykova

Patent Attorney

01 October 2020

Invalidating a European patent

Being engaged in various kinds of business in the European Union (EU), you may violate not only the rights to a patent in one of the EU countries, where you do your business or have some manufacture there, but also the European patent that is valid in this country. In such situation, you will naturally undertake various actions to eliminate this problem. One of such actions is to invalidate such European patent.

The European patent can be invalidated at the territory of the contracting countries in the following cases:

- the subject matter of the European patent is non-patentable, i.e. the solution represented in the patent does not comply with novelty and/or inventive step, and/or industrial applicability;

- the European patent does not disclose the invention with sufficient clarity and completeness for its implementation by the person skilled in the art;

- the subject matter of the European patent is beyond the scope of the information contained in the application in its original version, or if this patent has been granted based on a divisional application;

- the owner of the European patent does not have the right to it, i.e. he is not the author of this technical solution or its legal successor.

In addition, the European patent may be partially invalidated.

To invalidate the European patent, one should file a relevant objection. Within nine months after the publication of the information on the grant of the European patent in the European Patent Bulletin, any person may file to the European Patent Office the objection to the grant of this European patent according to the Instruction to the Convention. It is deemed to have been filed, if a fee for the objection has been paid. The persons, who have filed the objection, as well as the patent holder, shall take part in the proceedings on the objections.

The objection can be filed only on the following grounds:

(a) the subject matter of the European patent is not patentable;

(b) the European patent does not disclose the invention with clarity and completeness being sufficient for its implementation by the person skilled in the art;

(c) the subject matter of the European patent is beyond the content of the application as it has been filed, or, in the case of the patent granted based on the divisional application.

The invention is deemed to be patentable, if it is new, industrially applicable and it has inventive step.

In particular, the following is not deemed to be the inventions:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic solutions;

(c) the schemes, rules and methods of intellectual or economic activity, as well as a program for electronic computing machines;

(d) the ordinary presentation of the information.

If the objection is deemed to be admissible, the Department for the Consideration of Objections, in accordance with the Instruction to the European Convention, shall check whether at least one of the above grounds for the objection is an obstacle to maintain the validity of the European patent. During such check, the Department for the Consideration of Objections shall offer the parties to submit their comments regarding other party’s notices or the Department’ own notices as many times as necessary. The Department for the Consideration of Objections shall check the grounds of the objection that are referred to in the submission of the opponent according to the established documents. The grounds for the objection not indicated by the opponent may be checked by the Department for the Consideration of Objections on its own initiative, if they can affect the maintenance of the validity of the European patent. The notices and all responses to them regarding the objection filed shall be sent to all parties. If the Department for the Consideration of Objections considers it appropriate, it shall offer all parties to send the response during a certain period of time. When sending any notice, the owner of the European patent shall be given an opportunity to change the description, the claims and the drawings. Where necessary, these notices shall contain the grounds for the impossibility of maintaining the validity of the European patent.

If the Department for the Consideration of Objections considers that at least one of the grounds for the objection prevents the maintenance of the validity of the European patent, it will invalidate the patent. Otherwise, it shall reject the objection.

If the Department for the Consideration of Objections considers that, taking into account the amendments made by the patent holder in the course of the proceedings regarding the objection, the European patent and the invention that is its subject matter

(a) comply with the requirements of the European Convention, it shall make a decision to maintain the validity of the patent in the amended form, provided that the requirements of the Instruction to the European Convention are complied;

(b) do not comply with the requirements of the European Convention, it shall make a decision to cancel the patent.

In any contracting state, the European patent shall have the same effect and it shall be subject to the same conditions as the national patent granted by this state, unless otherwise is stipulated by the European Convention. In this case, the European Convention shall prevail over the national legislation of the European countries.

In addition, it should be noted that after the period of time established by the European Convention to file the objection to invalidate the European patent, it can be invalidated at the territory of the certain European state, where the patent is valid. However, it should be borne in mind that each country has its own requirements for filing the objection to the invalidation of the patent.

Summing up, it is possible to conclude that the grounds for the invalidation of the European patent are similar to the grounds in other countries of the world, and the differences are only in the procedural norms and the periods of time. It should also be noted that in order to cancel the registered patent, it is better to address a patent attorney or a patent specialist, who have experience in preparing the documents of such kind. This is necessary to be done in order to get a clear and reasonable idea of whether you have or have not a chance of invalidating someone else’s patent.

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