The European patent is a patent for industrial invention or utility model obtained through a unified filing, examination, and grant procedure, and is valid in the territories adhering to the Munich Convention, which currently number 38.
European Patent: which inventions are patentable?
It is possible to request a European patent for new products or processes in any field of technology, excluding therapeutic methods practiced on the human or animal body and new animal and plant varieties obtained through essentially biological methods. The invention must possess the characteristics of novelty, inventive step, and industrial applicability.
The following have been members of the Munich Convention: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Iceland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, former Yugoslav Republic of Macedonia, Malta, Monaco, Norway, Netherlands, Poland, Portugal, United Kingdom, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, Hungary.
Although not members of the Convention, the following countries may be designated in a European patent application: Bosnia-Herzegovina, Cambodia, Morocco, Moldova, and Montenegro.
The granting procedure involves a single application, drafted in a choice of English, French, or German, and allows for the procurement of a patent in the member states of the European Patent Organisation designated by the applicant (it is also possible to request the protection conferred by the European patent in other non-member states that authorize its extension to their territory).
Once the national validation procedure has been completed, European patents confer upon the holder, in the designated member states, the same rights that would derive from a national patent obtained in those same states.
Italian or foreign natural or legal persons may apply for European patents.
The European patent application: how should it be filed?
The application may be filed at the European Patent Office (EPO) at its headquarters in Munich, The Hague, or Berlin, or at the national patent offices of the contracting states.
An application originating from Italy must be filed at the Rome Chamber of Commerce, via Capitan Bavastro, 116 – 00154 Rome, which will in turn forward it to the UIBM (Ufficio Italiano Brevetti e Marchi - Italian Patent and Trademark Office). In order to proceed, the UIBM requests clearance from the military authority, which has 90 days to issue a decision. Once this period has elapsed and clearance is obtained, including through "silent consent" (silenzio-assenso), the application is sent to the EPO. In the event that the application does not represent a first filing (i.e., where priority is claimed from a national application), the patent application may be sent directly to the EPO.
The procedure for obtaining a European patent comprises two phases: the application filing phase (which includes the examination of formal requirements and the prior art search, concluding with the publication of the application and the search report), and the substantive examination phase of the application, which concludes with the eventual grant of the patent.
More specifically, at the time of filing, filing and search fees are paid. The search report and the examiner's opinion on patentability are issued approximately 6-8 months after filing. If the decision is made to proceed with the procedure, the designation fees for each state of interest (or a maximum flat-rate amount for all contracting states) and the examination fee must be paid within approximately 24 months of filing.
During the examination, the examiner may issue one or more technical reports, called Official Letters, in which objections regarding the patentability of the invention covered by the application are raised. It is mandatory to provide a substantive response to all objections raised in the official letters.
At the end of the centralized procedure before the European Office, the application is either granted or refused. If the application is granted, within 3 months of the grant, the applicant may initiate validation procedures in all designated states or only in some of them. Validation must be completed by a patent agent registered in the roll of patent consultants or lawyers of the respective country; in most cases, it is necessary to file a translation of the granted patent into the national language.
Indeed, if the language of the patent is not an official language of the designated state, the relative translation must be filed and certified as conforming to the original, under penalty of the patent's invalidity in that state. The translation is filed at a Chamber of Commerce.
Opposition to the European patent
It should be noted that within nine months of the date of grant, any third party may file an opposition against a European patent, which is evaluated by a specific Division of the European Patent Office; the decision of this division has effect in all designated states.
The timeframes for the grant of a European patent are generally longer than those required for an Italian application, usually due to the examination phase that characterizes the European procedure.
What are the advantages?
The European procedure offers the enormous advantage of being able to reach up to 38 countries with a single filing and a single examination procedure, postponing the actual choice of countries of interest and the related costs until the moment of grant.
After the publication of the European application—that is, 18 months after the filing or priority date—the holder of the application can obtain provisional protection in the designated member states by activating the relevant procedure.
Consequently, the holder of the application may take action against third parties according to the laws of the respective countries and is, in any case, entitled to fair compensation for the activities of such third parties which, in the period between publication and grant of the patent, involve an infringement of patent rights.
Validation of the European patent at the national level
Following the grant of the European patent, the holder must proceed with its national validation in the individual designated states. This operation generally requires a translation into the language of that state. After validation, European patents are governed in each state by their respective national laws.
From the third year onwards, a maintenance fee for the application is due, payable in advance to the European Patent Office. After the patent is granted, national maintenance fees are due in each designated state.
European patents have a duration of 20 years from the filing date of the European application. If the holder resides abroad and is not represented by an Italian agent, they must elect a domicile in Italy.
Future scenarios: European Unitary Patent
On February 14, 2019, the Council of Ministers definitively approved the decrees implementing EU Directive 2436/2015 and Regulation No. 2424/2015 on the European unitary patent (so-called "Unitary Patent").
The two legislative decrees harmonize the regulations regarding patents and introduce new protections for trademarks.
With the European unitary patent, likely operational from mid-2019, businesses will be able to benefit from uniform protection in all EU member states.
Unitary Patent – European Patent: differences
The unitary patent will not replace but will simply exist alongside the patent protection currently available at the national level (in Italy at the UIBM) and at the European level (at the EPO). It will become operational after the entry into force of the international Agreement on a Unified Patent Court (UPC) and the start of its provisional application.
The European patent with unitary effect ("unitary patent") will be issued by the European Patent Office (EPO) and will allow, through the payment of a single renewal fee directly to the EPO, for patent protection to be obtained simultaneously in the 26 EU countries adhering to the initiative: Italy, France, Germany, United Kingdom, Netherlands, Belgium, Luxembourg, Poland, Malta, Cyprus, Greece, Sweden, Denmark, Finland, Estonia, Latvia, Lithuania, Czech Republic, Slovak Republic, Slovenia, Portugal, Austria, Romania, Bulgaria, Hungary, Ireland.
Estimates regarding the applicability of the unitary patent suggest, in the best-case scenario, no earlier than the first half of 2020, considering that the ratification of the UPC Agreement and its Protocol on Provisional Application is experiencing delays in some participating EU countries.