Slide 13 What rights does a patent confer? The term of the European patent shall be 20 years from the date of filing of the application (Article 63(1) EPC. However, nothing in Article 63(1) EPC shall limit the right of a contracting state to extend the term of a European patent, or to grant corresponding protection which follows immediately on expiry of the term of the patent, under the same conditions as those applying to national patents: (a) in order to take account of a state of war or similar emergency conditions affecting that State; (b) if the subject-matter of the European patent is a product or a process for manufacturing a product or a use of a product which has to undergo an administrative authorisation procedure required by law before it can be put on the market in that State (Article 63(2) EPC). The full text of Article 63 of the EPC is available from the EPO website: http://www.epo.org/patents/law/legaltexts/epc.html. The full text of Article 64 EPC is available from the EPO website: http://www.epo.org/patents/law/legal-texts/epc.html. For medicinal products and plant protection products the possibility exists to extend the period of protection for the invention beyond 20 years, by a maximum of 5 years, to take account of the amount of time taken for the regulatory authority to authorise a product, where the patent owner needs to go through a lengthy approval procedure to ensure the product is safe before it is released onto the market. This extra period of protection is provided by supplementary protection certificates which are provided for under EC regulations and can be applied for at the national IP offices in the EPC contracting states where patent protection is in place. Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products: http://eur-lex.europa.eu/ LexUriServ/LexUriServ.do?uri=CELEX:31992R1768:EN:NOT. Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products: http://eur-lex.europa.eu/lexuriserv/ LexUriServ.do?uri=CELEX:31996R1610:EN:NOT. 34 Patent teaching kit How patents work
A patent is a legal title granting its holder the right to prevent third parties from commercially exploiting an invention without authorisation. So a patent is not a right to use; instead a patent protects an invention by giving the owner of the patent the right to stop anyone from making or using the invention without the owner's consent. A patent owner has exclusive rights to prevent others who do not have his consent from doing certain things (e.g. making the patented product, using a patented process, offering for sale, selling or importing). The rights conferred by a European patent are set out in Article 64 of the EPC, which states that: "(1) A European patent shall confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each contracting state in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State; and (3) Any infringement of a European patent shall be dealt with by national law." Note Infringement arising under point (3) will be discussed at the end of the lecture. A patent owner also has the right to assign or transfer the ownership of a patent and to conclude licensing agreements. As we shall see later in this lecture, these rights are important because they reward the inventor and, in doing so, create the incentives to encourage innovation these rights are set out in Articles 71-73 of the EPC. The protection granted by a patent is for a limited time. The maximum term of patent protection is 20 years starting from the date of filing the patent application and after that anyone is free to copy the invention disclosed in the patent. The term of a European patent is set out in Article 63 EPC. Patent teaching kit How patents work 35
Slide 14 Who is entitled to apply for and obtain a patent? (1) For further information about who is entitled to apply for and obtain a European patent (Article 58-61 EPC), see: Guidelines for Examination in the European Patent Office, Part A, Chapter II, 2 (Persons entitled to file an application): www.epo.org > Patents > Law > Legal texts > Guidelines for Examination: http://www.epo.org/law-practice/legal-texts/guidelines.html. If an application for a patent is filed by more than one applicant (Article 59 EPC) and the request for a European patent does not name a common representative, Rule 151, paragraph 1, of the Implementing Regulations of the EPC provides that "the applicant first named in the request shall be deemed to be the common representative. However, if one of the applicants is obliged to appoint a professional representative, this representative shall be deemed to be the common representative, unless the applicant first named has appointed a professional representative. The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent." See: Rule 151 of the Implementing Regulations of the EPC: http://www.epo.org/law-practice/legal-texts/html/ epc/2010/e/r122.html. The case law on the right to a European patent is set out in the Case Law of the Boards of Appeal of the European Patent Office, V, page 643: http://www.epo.org/patents/appeals/case-law.html. 36 Patent teaching kit How patents work
A European patent application may be filed by any natural or legal person, or any body equivalent to a legal person, irrespective of nationality and place of residence or business. This is set out in Article 58 EPC. The application for a European Patent must designate the inventor (i.e. even if it is the inventor's employer who is actually applying for the grant of a patent). This is set out in Article 81 EPC. A European patent application may also be filed by joint applicants or by two or more applicants designating different EPC contracting states. This is set out in Article 59 EPC. Note: Where there are different applicants for different contracting states, they are regarded as joint applicants for the purposes of proceedings before the EPO. This is set out in Article 118 EPC. What happens under the EPC when an inventor is an employee is discussed in greater detail on the next slide. Patent teaching kit How patents work 37
Slide 15 Who is entitled to apply for and obtain a patent? (2) Note The Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition) determines where entitlement proceedings can be brought when a European patent application is alleged to have been filed by a person who is not entitled to it: http://www.epo.org/law-practice/legal-texts/html/ epc/2010/e/ma4.html. 38 Patent teaching kit How patents work
Whether or not an inventor is the applicant for and, if a patent is granted, the holder of a patent, will depend on the following: The right to a European patent will belong to the inventor or his successor in title. This is set out in Article 60(1) EPC. But the situation is more difficult if the inventor is an employee... If the inventor is an employee the right to the European patent will be determined in accordance with the law of the EPC contracting state in which the employee is mainly employed. However, if the contracting state in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the state in which the employer has his place of business to which the employee is attached. This is also set out in Article 60(1) EPC. Generally, an invention relevant to the employee's normal field of employment will be owned by their employer, but the employee may receive an additional financial reward (depending on the law of the EPC contracting state concerned). But even when they are not the applicant for or proprietor of a European patent, the inventor still has the right to be mentioned as such before the EPO. This is set out in Article 62 EPC. Patent teaching kit How patents work 39