Hints and Caveats
- Following developments in the U.S. there is a tendency at the European Patent Office (EPO) and in European countries to grant patents on subjects which are not 'technical' in a narrow sense, e.g., software, business methods, particularly financial services and e-commerce.
- Publication before a priority date has been secured destroys novelty in most European countries. There is no grace period (or its applicability is so limited that it is normally not of practical importance) and it is as a rule not possible to invoke dates prior to application or priority dates (like conception date etc.).
- In Germany, Austria, France, Italy and other countries utility models offer a low cost alternative to patents. Advantage: quick and easy prosecution. Drawback: shorter term. See also the remarks concerning the Swiss patent system below
- Features of the European patent system (EPC):
– A European patent is effective in the states designated in the application. Any contracting state can be designated, extension of the patent to certain extension states is possible (http://www.epo.org/about-us/epo/member-states.html). Designation of all contracting states by payment of designation fee. – A patent application may be filed in one of the three official languages of the EPO (English, French, German) which thereby becomes the language of the proceedings. – Patent applications are published ca. 18 months after the earliest priority date. – The EPO carries out a prior art search based on the application. If the search report has been established before the publication of the patent application they are published together (A1 publication), if not, the patent application without search report (A2 publication) and the search report (A3 publication) are published separately. – An examination fee and the designation fees are to be paid within six months of the publication of the search report (A1 or A3 publication). Divisional applications can be filed during examination, subject to certain time limit. Their content is limited to the subject matter of the original application (no new matter). – Annuities are due for patent applications from the 3rd year on up to grant and must be paid in advance to the EPO. Late payment with surcharge is possible up to six moths from the due date. – In general, in every designated state where the language of the proceedings is not an official language a translation of the complete specification into such official language must be filed within three months of the grant date, otherwise the patent will lapse in the country in question. However, if a designated state has acceded to the London agreement it may only demand that a translation of the claims into an official language of the state be filed and a translation of the description into a particular official language of the EPO. If one of the official languages of the EPO is also an official language of the designated state it may not demand the filing of a complete or partial translation of the patent. – After grant annuities are due in every designated state. Lapse of the patent in certain designated states e.g. due to non-payment of annuities does not affect its validity in other designated states. Term of the patent: 20 years from the application date. – A notice of opposition to a patent can be filed by any third party within nine months after grant. The patent can be revoked, upheld with amendments or upheld unamended. Amendments must not involve new matter or broaden the scope of the claims. – Preliminary protection entitling the patentee to damages or a compensation for the period between publication of the application and grant of the patent is generally available. Protection is usually conditional on the filing of a translation of the claims into an official language of the contracting state. – All EU countries are EPC contracting states. EU-wide exhaustion of patents implies that if an article which falls under the scope of a European patent valid in part of the EU only has, with the consent of the patentee, been sold in an EU country where the patent is not in force the said article can subsequently be exported to any EU country regardless of the patent in question.
- Features of the Swiss patent system (Swiss national patents):
– Swiss patents are also effective in Liechtenstein. – Patent applications may be filed in German, French or Italian. – Prior art search optional. – No substantive examination. – Annuities are due from the 4th year on and have to be paid in advance. Late payment within three months (no surcharge) or within six months (surcharge) after the due date is possible. Term of a patent: 20 years from the application date. – Swiss national patents have many of the advantages of utility models (quick and easy prosecution) but not their main drawback (short term). – The proprietor of a patent which is dependent on an older patent, i.e. whose scope of protection is contained in the scope of the older patent may be entitled to a compulsory licence with respect to the latter so as to be able to make use of his or her own patented invention. This applies to European patents as well.