Crash course on patents: International patent treaties

When someone wants to apply for a patent in multiple countries, he has to follow the national procedures in every one of those countries separately. Since these procedures are roughly the same in all of these countries, this means a lot of duplicated efforts. Various international treaties have been established over the years in order to streamline the application process for a great deal.

The Paris Convention

The oldest treaty related to patents is the Paris Convention (1883). While it does not regulate any aspect of the examination, it does establish the very important right of priority. Someone who has filed a patent application in any country that is a member to the Paris Convention, can within one year after that filing file patent applications in other countries, claiming the filing date of the first application as the effective filing date of the later applications. This way, he has up to one year to decide in which countries he wants to apply for patent protection and to make the necessary preparations (like translating it into the official languages of those countries) for doing so.

When the priority of an earlier application is claimed, the filing date of the earlier application is regarded as the filing date of the later application when doing the novelty search. That means that only publications that exist before the filing date of the earlier application are considered. This allows an inventor to, for example, file a patent application quickly in one country, then publish his invention in a journal or show it at an exhibition, and then at his leisure file patent applications in other countries with the benefit of the priority claim. His publication or presentation at the exhibit will not be damaging for his patent, even though they completely describe the invention and were published before the filing date of those later applications.

An additional advantage of filing an application while claiming the filing date of another application, is that in most countries, the patent term is determined from the actual filing date in that country. This means that this term is effectively shifted one year into the future.

The Patent Cooperation Treaty

Even with the benefit of the priority system as provided by the Paris Convention, obtaining patent protection in 20 countries still means having to start 20 separate national procedures. The Patent Cooperation Treaty (PCT) is an attempt to at least streamline the first two steps of the various national procedures. Using the PCT an applicant needs only to file one single patent application in which he indicates ("designates") all the countries in which he wants to have patent protection.

The International Bureau, a division of the World Intellectual Property Organization (WIPO), receives the patent application and checks that it meets the formal requirements. It also publishes the patent application 18 months after filing. One of the major patent offices in the world is then appointed the International Search Authority and performs the literature search. Uusually this is the US Patent and Trademark Office, the European Patent Office or the Japanese Patent Office. After the search has been performed , and the applicant is satisfied with the results, he can elect to continue the procedure at the National Offices of the countries he designated. The International Bureau transmits the application and the search results to those National Offices. Optionally, the patent office that performed the search can also issue a preliminary opinion on the patentability. This opinion is then also supplied to those National Offices.

Upon receiving a PCT application, the National Offices then immediately start with the examination, often using the search report drawn up by the International Bureau as a basis. This means that the applicant does not need to have a separate search performed at every National Office, which is a substantial saving in costs (although National Offices are free to do their own search from scratch, or perform an supplementary search, which of course still costs money). However, the applicant must still convince each Examiner in every country he designated that the invention is patentable in light of the state of the art as described in the search report. And the Examiner of course applies his country's national standards for patentability.

The European Patent Convention

The European Patent Convention (EPC) goes even beyond what the Patent Cooperation Treaty establishes. An applicant files a single European Patent Application and designates the countries in Europe in which he wants to have patent protection. The European Patent Office (EPO) performs a novelty search and prepares a search report. Using this search report, the Examining Division (three Examiners) then determines the patentability of the invention. The procedure is comparable to the national procedure, except in that it has only to be performed once regardless of how many European countries were designated.

If the Examining Division decides that the invention is patentable, the EPO grants a European Patent. This is a slightly misleading name, since it does not grant any traditional patent rights. Rather, it grants the applicant, in the countries he designated, the same rights as would have been granted in the case of a national application. A European Patent is therefore sometimes referred to as an "bundle of rights".

Despite the name, the EPO is not an organization within the European Union. Also non-EU members are party to the EPC.

Once a European Patent has been granted, anyone has the right to oppose it within 9 months after grant. If the patent is then found to be invalid, it is revoked in all countries simultaneously. After these 9 months, the patent can only be revoked separately for each country in which it was granted. This is substantially more expensive and time-consuming.

The EPO, however, is not the final authority on patent matters in Europe. A European patent effectively grants its owner national patents in every country that is party to the EPO (or those countries the owner designated). Issues of validity and infringement must be dealt with according to the national patent law in each country.

In particular, a European patent can only be declared invalid by a court in one country for that country. Article 16(4) of the Brussels Convention on Jurisdiction and Enforcement specifically states that issues related to the registration of a right are exclusively the domain of the country in which that registration took place. This means that someone wanting to invalidate a European patent that was granted in 18 countries must start 18 separate court proceedings. Of course, once the first few proceedings are won, the rest should be relatively simple and may not even be necessary, since the patent owner will be unlikely to actually enforce his patent after that.

Europe does not have an equivalent of the US Court of Appeals for the Federal Circuit, which means that in principle every country can rule differently on patent matters. There are some restrictions. Article 69 of the EPC gives a basic principle on determination of the scope of the right and the way in which it should be interpreted.

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