International aspects

International protection

A patent must be applied for in each country in which the inventor needs protection, otherwise they will have no control over people exploiting the invention in that country. Since a UK patent gives the inventor the right to stop people importing the invention (if it is a product), a UK patent alone may sometimes suffice.

However, the rules on free movement of goods within the European Community mean that it is inadvisable to reply on a patent in one Member State only. In any case, it is rare to find an invention that has no export potential. Even so, effective Europe-wide protection can usually be achieved if patents are obtained in a few key markets as it would not be worth an infringer’s while exploiting only the smaller national markets in which protection had not been obtained.

There are two ways in which a UK application can be used as the basis for obtaining protection in other countries, the European Patent Convention and the Patent Co-operation Treaty.

European Patent Convention

Most European countries (including the UK, all the other members of the EC, Turkey and others) are parties to the European Patent Convention. The applicant files under the EPC a patent will (if successful) be granted a patent in each of the countries designated in the application. So a UK patent can be obtained by filing a European Application designating the UK; and this process can also secure protection in up to 35 other countries (and three more so-called “extension states” where patent filing is simplified). Making a single European Patent application may be much cheaper than making separate national patent applications in each country in which protection is required.

The applicant must designate the countries in which the patent is wanted and pay a fee for each. The application may be filed and the patent office in London (or any other national patent office in a EPC country) or at the European Patent Office at Munich or The Hague.

Because the Patents Act 1977 is based closely on the European Patent Convention the procedure for the grant of a patent is very similar.

The result of a successful European Patent application is the grant of a bundle of separate national patents, one for each designated country. These national patents will then be subject to the patent legislation of the country in which they are granted.

The Patent Co-operation Treaty

Introduction

The Patent Co-operation Treaty, to which 141 countries including the UK are signatories, simplifies filing on a world-wide scale. So a UK patent could be obtained by filing an international application under the PCT.

In countries which are members of neither the EPC or the PCT systems separate national applications will have to be made.

The PCT complements the Paris Convention system, which is concerned with access to the patent systems of member states but does little about standardising or simplifying the process of obtaining a patent. It proceeds from the assumption that there is a need at the international level for examination before the grant of a patent, since unexamined patents (the validity of which will be doubtful) are a nuisance. But pre-grant examinations are not cheap, and to have to repeat them many times in different national offices would be extortionately expensive. Efficiency could be increased and costs reduced by internationalising the system.

The Patent Co-operation Treaty was signed in 1970 (and came into operation in 1978) to remedy these problems. It is administered by the World Intellectual Property Organisation (WIPO) in Geneva.

International application

The PCT permits a single international application, in one language and in accordance with one set of rules concerning formal requirements and content, to be filed at a single Receiving Office. For UK residents this will generally be the Patent Office in London.

The applicant designates in the international application those countries in which a patent is wanted. The single application is sent to an international searching authority (of which the EPO at The Hague is one) where a search is carried out. The PCT also provides for a single preliminary examination.

As soon as possible after 18 months from the priority date the application and search report are published by WIPO’s International Bureau in Geneva. Copies of the search report will be sent to the applicant and (with the application) to each of the patent offices of the designated countries.

Each designated country then processes the application as a national one. However, the national fees charged by that office will have to be paid, and in many cases national rules will require a translation to be supplied.

It is also possible to apply for a European patent using the PCT route. If the European patent has been designated that part of the application will be processed according to the EPC’s rules.

The PCT offers a much simpler way of filing the applications, but it is not necessarily cheaper. Its main effect from the cost point of view is that it defers the payment of the fees charged by the national offices, and the decisions on validity taken by those offices can be delayed for 20 months (25 where there is an international preliminary examination). It says nothing about the grounds for validity of the patent application, which are left to national laws. The preliminary examination (which the applicant does not have to have) leads to a report couched in very general terms since validity is not a PCT issue, but it provides a basis on which national offices which lack examination facilities can decide whether to grant a patent or not.

Community patent

Harmonisation of patent law within the European Community has been brought about to a considerable extent already by the EPC. There is no need for the grant of Community patents to be preceded by the creation of a raft of substantive rules: they are already present in the EPC and in the national laws of the EPC members. The UK’s Patents Act 1977 is expressly intended to reflect the substantive law of the EPC, so that for example whether an applicant wants to file a European patent application or a UK one, a patent will only issue at the end of the process if she has identified a novel, non-obvious invention that is capable of industrial application and not on the list of excluded matters which is identical in each piece of legislation. The European Patent Office operates according to a different procedure from that of the UK Patent Office, and will sometimes grant or refuse patents that would as a matter of practice be dealt with differently in the UK office.

Although the EPC has proved successful, its value is limited by the need to take proceedings in many different countries to enforce it throughout the EC, with no guarantee that the same result will be obtained in each. Procedural rules also differ, and translation costs make it much more expensive to get protection in the EC than in the US or Japan.

The Commission’s proposal would enable the European Patent Office to grant Community patents as well as Europeans, with the option of obtaining a national patent still available to inventors. The Commission reckons that its new system would make patenting both affordable and legally certain.

At present it costs three to five times as much to obtain a patent in Europe compared with the US or Japan. Translation costs account for a large part of this: the description of the invention would only have to be in one of the three official languages (English, French and German) in which the European Patent Office operates, while the claims would have to be translated into the other two official languages only.

Legal certainly will be obtained by setting up a new centralised tribunal within the Court of Justice of the European Communities to deal with disputes relating to infringements and validity of Community patents. The EC Treaty will have to be amended to accommodate this, but such a change has already been called for to strengthen and reform the Community judicial system by the Commission in its position on the Intergovernmental Conference in March this year. Disputes about licensing and ownership of Community patents will remain matters for national courts.

The way that the two systems will be brought together will be for the European Community to become a member of the EPC in its own right. The draft Regulation sets out the rights that it will confer on the owner of a Community patent, rules for dealing in Community patents, and provisions about legal proceedings concerning Community patents: the substantive law is already mostly in the European Patent Convention, so that does not require repeating, and the administration of the new patents (including renewals) will be in the hands of the granting body, the European Patent Office.

The result is a simple-looking piece of legislation that will have a profound effect on the way patents are granted within the European Community. The novelty of the Community system lies not in its substantive rules but in the way the patents will be granted and the way in which they will be enforced. Given the expense of obtaining patent protection, which is traditionally national in scope (so the cost of getting wide protection is many times that of a single application) anything that gives inventors, who are often individuals, access to the essential legal protection at a lower cost is going to find a lot of takers.

The draft Regulation was first issued in 2000, and has had a somewhat chequered career since then. The most recent developments tracked on the Commission's website date from May 2004, when the Council discussed the matter and the Commission published Frequently Asked Questions to explain where the project was going.

European Patent Network

This is a project based on closer co-operation between the European Patent Office and national patent offices in Member States, explained briefly on the EPO website. It comprises four pillars:

  • the Utilisation Pilot Project, which enables examiners to draw on work done on earlier applications from which priority is claimed;

  • a new Co-Operation Policy, concentrating on on harmonising national practice, long-term training of patent office staff, use of databases and other tools, and raising patent awareness in member countries;

  • the Customer Service Project and

  • the Quality Project.

It is not subject to the same requirements for transparency as EC proposals, so there is relatively little to say about it. More information can be gleaned here.

European Patent Litigation Agreement

In 1999, work started on an alternative to the solution to cross-border patent disputes in the Community. In fact, the European Patent Litigation Agreement is a wider project. It will, if adopted, take the form of an optional protocol to the European Patent Convention. It envisages an integrated judicial system, including uniform rules of procedure and a common appeal court.

Problems arise because infringements of European patents are dealt with under national law, and by national courts. There is no centralised way to deal with validity, either, not after the 9-month opposition period has expired. Council Regulation (EC) No 44/2001 – the Brussels Regulation – though it is under review at the time of writing, is not suited to the sort of patent disputes that can arise within the Community, involving a collection of national rights. There are many instances of patents being litigated in different countries and contradictory outcomes arising, complicated by the fact that Germany splits infringement and validity proceedings (meaning that a patent can be found to be infringed, but later invalidated).

There would be a European Patent Court and a European patent Court of Appeal under the proposals. The European Patent Judiciary will take all patent cases in the Community, and may create regional chambers: in practice, only a handful of European countries deal with any significant volume of patent litigation (Germany, the UK and The Netherlands being probably the most important).

Unfortunately, the proposal has run into problems concerning competence, with the European Commission insisting that the Member States have no power to adhere to an international agreement in this area. Some countries would also have constitutional problems surrendering power to a non-national judicial apparatus. In 2007, it seemed that the proposal was effectively dead. However, the European Commission is now embarking on a project for a Unified Patent Litigation System which is directed to the same problems. In March 2009 it recommended that negotiations be started with other parties including the EPO.

Utility models

The Commission has produced a proposal for a directive to approximate the legal arrangements for protecting inventions by utility models, including the introduction of this form of protection in those Member States (such as the UK) where it does not already exist. It has made little progress.

The benefit of utility models is seen as their flexibility and relative cheapness and lack of formality. The Commission believes that they are therefore suitable for inventions with limited inventiveness and a short life expectancy. The patent profession disagrees.

Most of the proposals put forward by the European Parliament are incorporated in the revised proposal, which was published on 30 June 1999. The main features of the initial proposal - a lower level of inventiveness than that required for a patent, the absence of a prior examination, and a limited period of protection not exceeding ten years - are unchanged. The term of protection will comprise an initial 6 years followed by two periods of two years each.

As with patents, products and processes would be protectable but biological material and chemical and pharmaceutical products and processes would be excluded, Inventions would still have to be new and involve an inventive activity, and would have to be capable of industrial application. The main difference in qualification lies in the degree of inventiveness required.

Inventions would be considered to involve inventive activity if they represented an advantage and were not derived in an obvious way from the prior art. The definition of an inventive activity is a key element in the directive, as it is the defining feature that distinguishes a utility model from a patent.

No formal verification would be required before utility model protection is given. There will be no prior examination of the basic conditions relating to novelty and inventive activity. This would mean protection could be obtained cheaply and quickly, though the trade-off would be that many utility models would be found to be invalid later.

The European Parliament has addressed some of the shortcomings of the original proposal, providing a better definition of inventive activity and extending the right to request a search report on the state of the art to third parties as well as the applicant. The search report would be attached to the file, and would be a mandatory requirement in legal proceedings or for extensions of protection beyond the initial six years.

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