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Securing Patent Protection in Europe

By: Christopher Heer, Dominic Cerilli | Last updated: June 27, 2021

The Value of Applying for Patent Protection in Europe

After the United States, Europe and its many comprising nations top the list of Canada’s strongest trading partners. Unsurprisingly, the European Patent Office (EPO), which represents Europe’s biggest economies, is also the second most popular destination for Canadians to file patent applications.

A granted patent allows the owner to exclude others from using the invention disclosed, thereby providing the patent owner with a time-limited monopoly. Such a monopoly is invaluable in breaking into new markets or growing your presence in an already familiar territory, but it is important to understand that patent rights are granted on a jurisdiction-by-jurisdiction basis. Put another way, securing patent protection in Canada will not by itself provide legal protection in Europe.

As such, a multijurisdictional filing strategy can be instrumental to protecting your invention wherever you intend to do business. With Europe having a collective eleven-figure GDP, showing consistent economic growth year over year, being home to many innovative companies, and representing around a sixth of the global economy, filing for patent protection in Europe is a natural choice for many Canadians looking to commercialize their intellectual property.

Key Differences between European and Canadian Patent Filings

To streamline patent filings in Europe, a multilateral treaty known as the European Patent Convention (EPC) created the European Patent Organization. The European Patent Organization is comprised of a supervisory administrative council and the European Patent Office (EPO). The EPO handles the executive affairs of the European Patent Organization, namely by receiving and processing patent applications for the EPC member states and deciding whether or not a European patent is ultimately granted.

It is important to understand that the EPO does not represent the same countries that comprise the European Union. The nations subject to the EPC and which are, consequently, subject to patents filed with and granted by the EPO include: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom. As such, if you intend to do business in any of the EPC member states, you should consider filing a patent application through the EPO.

Nonetheless, note that there are several key differences between the process of filing a European and Canadian patent application, including:

  • A filing at the EPO has the legal effect of a collection of national patents. A granted Canadian patent will only be enforceable in Canada, but a granted European patent has the same legal effect as if patents were filed in each member state it is validated. The role of the EPO is to provide a single filing office and procedure that allows businesses to enter European markets more effectively without worrying about competitors infringing upon their patent rights. As such, there is ample benefit to filing with the EPO regardless of whether only a few national markets are of interest or if you are looking for Europe-wide protection.

  • A granted European patent may be challenged at the EPO. Similar to how a European patent is processed and granted, a European patent may also be contested using a single procedure before the EPO. That is, if an entity in one of the member states wishes to object to a European patent grant, they may bring that matter before the EPO to contest the granted patent not only in their nation of residence or business, but across all member states of the EPC. This contrasts with the Canadian system, wherein oppositional proceedings before the Canadian Intellectual Property Office (CIPO) are only directed to patent rights in Canada.

  • Filing a patent application at the EPO is only an option for European entry – national applications are an alternative filing route. Businesses wishing to pursue patent protection in Europe have the option of filing an application with the EPO that seeks legal protection in all EPC member states, but may alternatively file with a national intellectual property office in Europe. While patent law in contracting states has been extensively harmonised under the EPC in terms of patentability requirements, grant procedures may nonetheless be structured and conducted differently between national offices. As such, the national route may afford legal rights with differing protections and may be preferred where a business is only interested in securing patent rights in one nation of interest. If more comprehensive legal protection is intended, a filing with the EPO is likely the preferred route.

  • European and Canadian patent applications are examined for patentability in view of different jurisprudence. For a claimed invention to be found patentable by the EPO, it must be new, involve an inventive step, be susceptible of industrial application, and be of patent-eligible subject matter. While the Canadian standard for patentability is similar, there are nuanced differences between how these four required criteria have been shaped by European legal traditions and administrative practice guidance. At the EPO:

    • To be new, an invention must not form part of the state of the art. The state of the art under the EPC follows the principle of absolute novelty, wherein the state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use, or in any other way before the date of filing or priority for the patent application. This standard of absolute novelty contrasts greatly with the 12-month grace period afforded to Canadian and U.S. patent applications, wherein a Canadian or American inventor that discloses their proposed invention still has a 12-month period within which to file a patent application. Under the EPC, an earlier disclosure of the invention is non-prejudicial only if it occurred less than six months before the filing of the European patent application and was due to an evident abuse in relation to the patent applicant or due to display at an exhibition falling within the terms of the Paris Convention on international exhibitions. Outside of these two exceptions, any disclosure of the invention prior to the date of filing or the earliest claimed priority date can be cited by the EPO against the application as forming part of the state of the art. This applies even if the patent applicant was the entity responsible for the disclosure.

    • Involving an inventive step assesses if the invention is not obvious to the skilled person in the light of the state of the art. Unlike the test for whether a proposed invention is new, the analysis of an inventive step may conjunctively apply multiple sources of prior art. The underlying principle here is to prevent exclusive rights impeding normal and routine development. Note that the EPO adopts a realistic and balanced assessment of the inventive step criterion, generally under a “problem/solution” approach. That is, the EPO assesses whether the solution presented to the problem identified in the patent application is obvious to the person skilled in the art. Note that this is a contextual analysis coloured in by European law and administrative practices.

    • Being susceptible of industrial application requires a patent application to make clearly and explicitly known the way in which the proposed invention is capable of exploitation in industry. While the way in which a proposed invention can be exploited in industry will often be self-evident, European applicants should be cautious if they seek to file a patent application for a method of testing or certain biotechnological inventions (e.g. sequences and partial sequences of genes).

    • What constitutes an invention of patent-eligible subject matter is not explicitly defined by the EPC, but there is a non-exhaustive list of subject matter and activities for which a patent may not be granted. Computer programs are one such prohibition, although a computer program can be patentable if, when running on a computer, it causes a further technical effect going beyond the normal physical interaction between the software and the hardware. Methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are also excluded, but there are exceptions for products, substances, and compositions used in such methods (e.g. medicaments or surgical instruments). Plant and animal varieties and biological processes for the production of plants or animals and the plants or animals obtained thereby are also excluded from patentability. Lastly, there are several exclusions for proposed inventions contrary to public order or morality, like for human cloning and processes for modifying the germ line genetic identity of human beings, among others. These prohibitions are similar to those found in Canada, but there are many important distinctions that should be investigated by an appropriate regional patent professional prior to filing.

  • The EPO follows a different administrative filing procedure and uses different formatting conventions. While the abstract, claims, description, and drawings disclosing a proposed invention for filing with the EPO encompass substantially the same content as what would be found in a Canadian application, each follows different formatting conventions and must be accompanied by different administrative filing documents. For an EPO patent application, it must be filed by an appropriately entitled entity, accompanied by a confirmation of designated member states, filed in English or French or German or be accompanied by a translation into one of these languages, and include a request for a grant of a European patent along with the abstract, claims, description, and drawings pertaining to the proposed invention. A European patent application may be filed in electronic form using the EPO Online Filing (OLF) software or the EPO case management system (CMS), or may be filed in person, by postal services, or by fax.

  • Examination must be requested upon filing or within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. In Canada, examination can be requested either upon filing a patent application or within 4 years of the filing date. The EPO similarly offers the option to request examination upon filing a European patent application, but its later deadline to file a request is subject to a mention of publication of the European search report, thereby making this later deadline dependent in part on actions taken by the EPO. The European search report is normally issued within five months of filing and provides information on the relevant prior art to the applicant, to the EPO examining division, and, once published, to the public. A request for examination must be filed within six months of the date on which the European Patent Bulletin mentions the publication of the European search report or else the European patent application will be deemed to be withdrawn.

  • EPO renewal fees differ from Canadian maintenance fees. Renewal or maintenance fees must be paid to preserve certain patent rights at a patent office. In Canada, maintenance fees are due on a yearly basis starting on the second anniversary of a patent application’s filing date. The EPO similarly requires payment of renewal fees for a European patent application on a yearly basis starting on the third year from the date of filing of the application. If an EPO renewal fee is not paid in due time, the European patent application will be deemed to be withdrawn. The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published in the European Patent Bulletin.

  • There are several restrictions on representation before the EPO. A legal entity with their residence or principal place of business in an EPC contracting state may represent oneself in proceedings before the EPO. If you have neither a residence nor your principal place of business in a contracting state, then you must appoint a representative and act through them in all proceedings before the EPO other than in filing your European patent application and paying the associated fee. While representation before the EPO may be undertaken only by professional representatives who are on a list maintained by the EPO or by legal practitioners entitled to act before the EPO, a Canadian patent lawyer can still be of great assistance in drafting. Many patent lawyers are part of a transnational network of patent agents that facilitate foreign filings. Operationally, this means a Canadian patent lawyer can draft the substance of an application and file that application in Canada (and in the United States for Canadian applicants), then coordinate with a European patent lawyer to file a European patent application directed to the same proposed invention. Put another way, applicants can still draw upon the expertise of Canadian patent lawyers in drafting a European patent application.

Strategic Considerations for European Patent Filings

Before filing a patent application in Europe, consider whether proceeding through the EPO or through a nation’s individual patent office is the best route for your business. If you are looking to expand your business throughout Europe, it is likely better to proceed through the EPO such that any granted patents would provide protection in each of the interconnected European economies that are subject to the EPC. The streamlined EPO filing procedure also reduces the workload associated with filing in multiple jurisdictions. In contrast, if you start by filing with a national patent office and later decide to file in other European jurisdictions, you would need to file a new patent application and would need to adapt such an application to comply with the administrative filing requirements of each subsequent office of filing.

Also consider investigating whether your proposed invention is patentable before initiating a multiregional patent filing strategy. This may involve independent research into comparable products, speaking with a patent lawyer about developing a protection and commercialization strategy, or having a formal patentability assessment conducted. If you are contemplating filing in multiple jurisdictions, a worldwide patentability assessment can be vital to understanding the risks associated with filing and whether it is worthwhile to pursue patent protection.

Filing a European patent application should be a calculated undertaking, but it is nonetheless a sound strategy to file for patent protection in regions with strong economic ties. For persons residing and primarily doing business in either Canada, Europe, or the U.S., this may mean applying for patent protection in all three regions. If you are considering commercializing products in Europe and would like to learn more about how patent protection can add value to your business, call us today for a complimentary and confidential initial telephone appointment with a member of our team.