Comments on the revision of the hottest European P

2022-10-24
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The newly revised European Patent Convention came into force on December 13, 2007. The Convention simplifies the ways and procedures of European patent protection, facilitates patent applicants and patentees, and retains the high-quality examination standards of the European Patent Office. In addition, as the European Patent Convention is the legal basis of the European Patent Organization and its implementing agency EPO, the patent law and EPO examination procedures of the contracting parties to the Convention will also be changed due to the amendment of the European Patent Convention. On the one hand, the revision of the European Patent Convention reflects the need for inventors, researchers and enterprises to use the patent system more conveniently. On the other hand, it marks an important step towards a more flexible and friendly organizational structure of the European patent system. This paper introduces the main contents of the new revision of the European Patent Convention

the European Patent Convention has 32 original members. With the accession of Croatia and Norway on January 1st, 2008, the number of member states of the Convention has reached 34. In addition, Albania, Bosnia and Herzegovina, Serbia and the Republic of Macedonia have also recognized the European Patent Convention in their territories, which makes European patents valid in 38 countries and about 570million people

the newly revised European Patent Convention came into force on December 13, 2007. The Convention simplifies the ways and procedures of European patent protection, facilitates patent applicants and patentees, and retains the high-quality examination standards of the European Patent Office (EPO). In addition, as the European Patent Convention is the legal basis of the European Patent Organization and its implementing agency EPO, the patent law and EPO examination procedures of the contracting parties to the Convention will also be changed due to the amendment of the European Patent Convention. This is another milestone in the internationalization of European patents

since the implementation of the European Patent Convention formulated in 1973, the international concept of intellectual property has undergone several changes and evolution. However, the European Patent Convention is difficult to be amended, mainly because the amendment of the provisions of the Convention requires the approval of the member states' parliaments, which is a very cumbersome procedure

in order to be in line with the TRIPS agreement of the WTO and the Patent Law Treaty of the world intellectual property organization, the diplomatic conference of the European Patent Organization revised the European Patent Convention in 2000, which is the 2000 European Patent Convention (hereinafter referred to as epc2000). The text amendment of epc2000 was passed in February, 2001, and the implementation regulations of epc2000 were passed in December, 2002. After the ratification procedures of the contracting parties, the newly revised European Patent Convention epc2000 officially entered into force on December 13, 2007

the newly revised European Patent Convention is a supplement and update to European patent legislation, so that it can adapt to the future development of patent law. In the future, most of the amendments to the European Patent Convention can be directly approved by the Administrative Council of the European Patent Organization without having to be resolved through a diplomatic conference. Epc2000 can better meet the needs of the future development of patent law

the main contents of the revision are:

the text of the patent application can be in any language

according to Article 14 of epc2000, the patent application can be in any language, which is conducive to the applicant to obtain the application date as soon as possible. Europe adopts the principle of first application, and the determination of the date of patent application is of great significance

under the original rules, if Chinese enterprises want to apply for European patents, they can only submit the official language text designated by the European Patent Office in English, German or French. However, according to epc2000, Chinese enterprises can first apply in Chinese, obtain the application date as soon as possible, and then supplement and submit the language text designated by the European Patent Office

it should be noted that the acquisition of a European patent does not mean that the patent will automatically enter into force in all contracting countries of the European Patent Convention. The European patent system provides the contracting state designation function, allowing applicants to designate contracting states that want to be protected. Generally, the applicant will not designate all Contracting States, but a relatively small number of contracting states that are of great significance to it

after the patent applicant obtains the European patent, if he wants to get the protection of the designated country, in addition to paying the fees to the designated country, he must also submit the official language text of the designated country, which adds an additional burden to the patentee. In order to solve this problem, major European countries reached the London Agreement in October 2000. The purpose of the agreement is to simplify the requirement that European patent applications must submit translated texts among Member States

according to the London Agreement, a contracting state that does not use English, German or French as its official language should designate one of the above three languages  generally English  as the official language of the European patent case. The patent applicant can provide the designated language text to the country without providing a translation of the local language of the contracting state as before. This greatly reduces the burden of applicants and is conducive to the protection of patents in many countries

according to the regulations, the London agreement can take effect only after it has been approved by 8 countries of the European Patent Organization, including Germany, France and the United Kingdom. Although Germany and Britain have already ratified the agreement, the French government has been hesitant because of concerns that the agreement may have a negative impact on the use of French

On January 29th, 2008, France finally deposited its instrument of ratification with the European Patent Organization. The London Agreement will enter into force on May 1st, 2008, the first day of the month following the deposit of the instrument of ratification by France. Once implemented, the agreement will greatly reduce the cost of translation of patent application texts, thereby saving a lot of money for patent applicants in Europe. Insiders said that the implementation of the London Agreement will promote the rapid development of the European economy and make the European patent system more attractive, especially for small and medium-sized enterprises

priority extends to all members

the original rules stipulate that if a European patent applicant exercises priority, it can only be based on a patent application filed in a country that is a party to the Paris Convention. If the applicant has only filed a patent application with a country other than a country that is a party to the Paris Convention, then it cannot claim priority when applying for a European patent

in order to be consistent with the spirit of the TRIPS Agreement, Article 87 of epc2000 extends the priority to all members of the WTO. In this way, when applying for a European patent, the applicant can exercise the priority on the basis that the majority of the first applications submitted by the applicant in WTO members are their places of origin. ". This provision is very beneficial to applicants who are not parties to the Paris Convention

extension of claim priority period

epc2000 there are two situations in which the applicant claims to extend the priority period:

first, if the application date of the European application is within 12 months from the application date of the first application, that is, the priority date ", the applicant of the European patent case may claim priority according to law. The applicant may claim priority at the time of filing the application, or may not claim priority at the time of filing the application and file it at a subsequent stage. Epc2000 stipulates that the applicant must provide the priority certificate within 16 months of the earliest priority date. If the document does not meet the requirements, the applicant will be notified to supplement it. If it is not completed, the priority will be lost

second, if the application date of the European application is 12 months after the priority date, the applicant of the European patent case has missed the right to claim priority in principle. However, according to Article 122 of epc2000, the applicant is allowed to request a reply to the right within 2 months after the expiration of the claim period under the condition that the applicant has fulfilled the obligation of due care and still delays the period, and correct the behavior required in the original period within the same period. It should be noted that in this exceptional case, the applicant has a high probability of being rejected by the European Patent Office

the first application case constitutes the existing technology of the later application in all contracting countries

Europe has always adopted the principle of first application for novelty recognition. Based on the exclusivity of patent rights, if there are more than two applications for the same invention, the first applicant can obtain the patent right. According to Article 54 (3) of the original rules, if the same invention has been recorded in the previous application when the latter application is filed, the law still recognizes the content contained in the previous application as "existing technology" according to the principle of first application, even if the previous application has not been published or approved at an early stage, and even if the invention of the latter application has not entered the public domain, so that the latter application loses novelty. However, Article 54 (4) of the original rules also stipulates that Article 54 (3) applies only to countries where both the previous application and the subsequent application are designated. The reason for this restriction is that only countries where both applications are designated will have duplicate patents

but the problem is that only after the patent applicant pays the fees of the designated country can the country covered by the European patent application be determined, that is, the country designated by the applicant, and the fees of the designated country can be paid within 6 months after the publication of the search report at the latest. This practice makes it impossible to determine whether the first application constitutes the existing technology for the later application after it is publicized at an early stage, and the later application may be subject to novelty review again due to the payment of the fees of the designated country after the substantive examination, resulting in legal uncertainty of the case

in order to solve this problem, Article 54 (4) is deleted in epc2000. This shows that as long as the first application is made public at an early stage, whether there is plastic material or whether the designated country has paid the fees of the designated country, the first application constitutes the existing technology of the second application in all contracting countries

correction of the scope of rights of the approved patent

after the approval of the patent, if it is found that there are other existing technologies before the patent, the patent may be ruled invalid. In order to avoid such consequences, the patentee can propose to amend the scope of rights. According to the original rules, European patentees can passively propose the limitation or withdrawal of the scope of rights to the European Patent Office in the patent objection procedure proposed by a third party after the patent is approved. If the patentee wants to actively amend the scope of rights, he must submit a change request to each designated country in accordance with the correction procedure in the domestic law of the designated country. In other words, the obligee should not introduce the process control principle and can directly apply for amendment to the European Patent Office

this practice is very inconvenient to the patentee in terms of economy or time cost, and the applicant may also face the risk of refusal of amendment in some countries, and the amendment result may lead to inconsistency in the scope of patent protection in various countries

After the implementation of epc2000, the patentee can still apply for correction according to the above procedures. At the same time, Article 105 of epc2000 opens up another way, allowing the patentee to take the initiative to propose the limitation or withdrawal of the scope of rights to the European Patent Office. When the patentee applies for limiting the scope of the patent, he must propose amendments to the substantive content, not just the text. The European Patent Office will only examine the correction proposed by the patentee, and will not examine its novelty and creativity

The assignee of the patent right also has the right to apply for correction to the European Patent Office. The applicant for correction must indicate which Contracting States it has patent rights in, and provide supporting documents proving that it has the right to make correction on behalf of other patentees. Once the correction is approved by the European Patent Office, the rights cancelled due to the correction are deemed to be non-existent from the beginning and extend to all Contracting States

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