Chapter §25.09 Patent Protection in Europe

• Jurisdiction: United States

§25.09 Patent Protection in Europe

Because the European market is important to many U.S. patent holders, this section overviews the options for obtaining and enforcing patent rights in Europe.

[A] Routes to Obtain Patent Protection

Presently there are at least four ways for a U.S. entity to obtain patent protection in Europe: (1) file an international application under the Patent Cooperation Treaty (PCT)²³⁵ designating the European Patent Organization (this is referred to as the "Euro-PCT route²³⁶); (2) file a European patent application in the European Patent Office; (3) file an international application under the PCT designating individual European nations of interest; or (4) file a patent application directly in the domestic patent office of the European nation of interest (this is referred to as the "national route"²³⁷).

Options (1) and (2) involve the European Patent Office (EPO), which is headquartered in Munich, Germany, with a branch in The Hague, Netherlands. The EPO examines patent applications in accordance with the provisions of the European Patent Convention (EPC),²³⁸ which was adopted in 1973 and entered into force in 1977.²³⁹

The EPO operates as a centralized system for the filing and examination of a single application to procure a "European patent"²⁴⁰ that may be thought of as comprising a bundle of national "parts."²⁴¹ More specifically, the EPC provides that each "European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise."²⁴² Assuming the EPO grants a European patent, the patentee must then ensure that the patent is "validated" in each European country where patent protection is sought.²⁴³

Notably, the European Patent Organisation (which includes the EPO and an Administrative Council) is not an agency of the European Union but rather an autonomous international organization. The roster of EPO contracting states is not identical with that of the European Union, although there is substantial overlap.²⁴⁴ Patent applications must be processed in one of the EPO's three official language—English, French, or German.²⁴⁵

[B] Routes to Enforce Patents

Although the European Patent Convention revolutionized the process of obtaining patent protection in multiple European nations, the enforcement of patents in Europe has remained thus far a domestic process. In other words, infringement actions are brought in the courts of the European nation where the alleged infringement occurred.²⁴⁶ This holds whether the patent being enforced was granted by a national patent office in Europe or is a "national part" of a European patent. The European Patent Convention provides a system of centralized procurement, but does not include a framework for centralized enforcement.²⁴⁷

[1] Unitary Patent System

In 2012, after a number of prior attempts,²⁴⁸ European legislators approved the creation of a European Union-administered Unitary Patent System.²⁴⁹ The system is intended to create a "European Union patent" or "unitary" patent having effect throughout all EU member states. "Once established, a granted unitary patent will be valid in all participating countries and, unlike the existing European patent, will no longer be a collection of nationally enforceable patents bundled together."²⁵⁰

As of April 2020, however, the Unitary Patent System was not yet in effect. But according to the European Patent Office, "[t]he start of the new [unitary patent] system is currently expected for the end of 2020."²⁵¹

[2] Unified Patent Court

Importantly, the EU Unitary Patent System (when it comes into effect) would also create a Unified Patent Court (UPC) for enforcement of patent rights throughout the EU. The UPC

will be the future centralised patent jurisdiction of the participating [EU] Member States. It will be a court common to the participating Member States and thus subject to the same obligations under Union law as any national court of the participating Member States, in particular [to] refer, where necessary, questions on the interpretation of European Union law to the Court of Justice of the European Union.

The UPC will have exclusive jurisdiction especially in respect of civil litigation related to infringement and validity for both the "classical" European patents and the European patents with unitary effect. . . .

During a transitional period of 7 years, actions for infringement or for revocation concerning "classical" European patents without unitary effect can still be brought before national courts. A proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period will also have the possibility to opt out from the exclusive competence of the Court (unless an action has already been brought before the Court). . . .

The UPC will consist of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will comprise local and regional divisions as well as a central division. The Court of Appeal will be located in Luxembourg while the seat of the central division of the Court of First Instance will be in Paris. Specialised sections of the central division will be set up in London and in Munich. . . . ²⁵²

In February 2013, 24 EU member states signed an international agreement for establishing the UPC.²⁵³ However, at least 13 EU member states (including France, Germany, and the United Kingdom) would have to ratify the agreement before it could enter into force.²⁵⁴

As of May 2020, the Unified Patent Court was not yet in effect.²⁵⁵

The endeavor received an important boost when, in November 2016, the Intellectual Property Office of the United Kingdom announced that it was proceeding with preparations to ratify...