Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

Throughout the European Union, the same criteria apply as before the European Patent Office (EPO): an invention must be novel, involve an inventive step and be capable of industrial application.

An invention is novel if it has not been made available to the public anywhere in the world before the filing or priority date. Inventive step exists if the invention is not obvious to the person skilled in the art, taking into account the state of the art. To be industrially applicable, the invention must be capable of being made or used in any kind of industry.

What are the limits on patentability?

The following are excluded from patentability:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs;
  • presentations of information;
  • inventions whose commercial exploitation would be contrary to public order or morality;
  • plant or animal varieties or essentially biological processes for the production of plants or animals; and
  • methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. According to the EU Biotech Directive (98/44/EC) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions, but an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element. The industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.

To what extent can inventions covering software be patented?

Computer programs ‘as such’ are not regarded as inventions. Nevertheless, if an invention is computer implemented, whether through hardware or software, and if it solves a technical problem using technical means, it may be patentable. The standard applied by the EPO is that a computer program claimed by itself is not excluded from patentability if it is capable of bringing about, when running on or loaded onto a computer, a further technical effect going beyond the ‘normal’ physical interactions between the program (software) and the computer (hardware) on which it is run. Individual courts in member states may apply different criteria or tests in spite of a common statutory framework applying.

To what extent can inventions covering business methods be patented?

Business methods are excluded from patentability in all member states. However, an invention relating to a business method may be patentable if it involves further novel and inventive technical means. 

To what extent can inventions relating to stem cells be patented?

The use of human embryos for industrial or commercial purposes is strictly excluded from patentability, and any application relating to stem cells will be refused insofar as the methods or products necessarily involve the destruction of human embryos. However, the European Court of Justice (ECJ) has ruled that parthenogenically derived stem cells are not “human embryos” and that:

in order to be classified as a “human embryo”, a non-fertilised human ovum must necessarily have the inherent capacity of developing into a human being. Consequently, the mere fact that a parthenogenetically-activated human ovum commences a process of development is not sufficient for it to be regarded as a “human embryo”.

The ECJ so ruled on the basis that according to existing scientific knowledge, such cells do not have the inherent capacity of developing into a human being and their use will not result in a denial of patentability.

Are there restrictions on any other kinds of invention?

Patents cannot be granted for:

  • processes for cloning human beings;
  • processes for modifying the germ line genetic identity of human beings; or
  • processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, and any animals resulting from such processes.
Grace period

Does your jurisdiction have a grace period? If so, how does it work?

A grace period of six months before the filing date exists to protect against two types of disclosure:

  • a disclosure due to or in consequence of a clear abuse in relation to the applicant or their legal predecessor; and
  • a disclosure arising from the display of the invention at an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions.
Oppositions

What types of patent opposition procedure are available in your jurisdiction?

The European Union itself has no patent granting powers, and most of the major national jurisdictions within the European Union have no opposition proceedings. However, all EU countries are members of the European Patent Convention (EPC). For European patents granted under the EPC, there is a nine-month post-grant period to file opposition. Any person may oppose the patent on the grounds of lack of patentability, insufficiency or unallowable amendments. Alleged infringers may intervene in ongoing oppositions at the EPO outside of the nine-month window. 

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

For European patents, a patentee may surrender or voluntarily limit its own patent before the EPO. However, in the context of a third party challenging the patent, no other centralised or harmonised routes for challenging a patent outside the courts are available throughout the European Union. Individual member states may allow for action to be taken at national level. 

How can patent office decisions be appealed in your jurisdiction?

In individual EU member states, decisions can be appealed according to national laws, with the limited possibility of referring questions to the ECJ where the questions relate to EU-regulated matters (eg, supplementary protection certificates or biotechnological inventions). However, this does not apply to most substantive patent law issues. Before the EPO, first-instance decisions can be appealed internally to the EPO Boards of Appeal, but not to the courts.

The unitary patent, which is not yet in effect and whose implementation is currently delayed and uncertain, will enable the EPO to grant patents with unitary effect in several member states. Once the system is in operation, decisions of the EPO that relate to the administration of the unitary patents will be appealable to the Unified Patent Court. 

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Obtaining protection throughout the European Union can be done on a country-by-country basis. More commonly, where several member states are to be covered, an applicant will typically apply through the EPO. The average time taken for grant of a newly filed European application is approximately three years, but this can vary widely in individual cases. The typical fee payable for a European patent from filing to grant, not including the post-grant national validation stage, is €6,000 to €20,000

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Enforcement is not available at EU level. The Unified Patent Court, whose ratification is currently delayed and uncertain, offers the prospect of a centralised enforcement procedure for a large number of participating member states. Not all member states have signed up to this system, and of those which have, not all have yet ratified the agreement. Until the system comes into force, enforcement must occur on a country-by-country basis in each of the 28 member states. However, as a practical matter, patent owners faced with infringement in a large number of member states will initially commence action in one or several countries in the hope of obtaining a quick and favourable decision which will increase leverage against the alleged infringer and encourage settlement in member states where action has not yet been commenced.

What scope is there for forum selection?

In many cases, where a patent dispute extends across several member states there will be considerable scope for forum shopping. Jurisdiction may be based on domicile or the location of the patent right or infringing act being litigated. Due to the national nature of patent rights and the current lack of a unitary patent, the courts of several member states may have jurisdiction. Therefore, where to commence a patent action within the European Union is a strategically important decision, and advice should be taken at an early stage for maximum strategic benefit.

Cross-border injunctions, in which the courts of one member state grant a preliminary injunction covering alleged infringements in several member states, are not generally possible. However, where several parties infringe the same national patent as a result of a single product, it may be possible to sue all of the defendants in the domicile of just one defendant, allowing for a degree of forum shopping (see the European Court of Justice decision in Solvay v Honeywell (C-616/10) in this regard). Potential defendants also have a degree of flexibility in choosing the forum for a dispute to be heard where they seek declarations of non-infringement, and this can be an important strategic consideration in any infringement dispute. 

Pre-trial

What are the stages in the litigation process leading up to a full trial?

Given the lack of harmonisation at EU level, this varies according to the procedures applying before the national court hearing the proceedings.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Given the lack of harmonisation at EU level, the answer will vary according to the procedures applying before the national court hearing the proceedings. The member states with the most active patent courts tend to impose strict case management deadlines, making it more difficult to delay proceedings. Therefore, in such member states plaintiffs can initiate the proceedings subject to jurisdiction and forum shopping rules.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

The courts of most member states permit an action for revocation (or invalidity or nullity) to be taken by a third party at any time after grant. There may be a necessity to pursue multiple parallel actions in different countries, as the courts of one country may not order the revocation of the equivalent patent in another EU country. 

At trial

What level of expertise can a patent owner expect from the courts?

Experience levels vary widely throughout member states and even among the individual courts in a single member state. The largest member states have specialised patent courts with highly experienced judges.

Are cases decided by one judge, a panel of judges or a jury?

The structure of the court will vary from one member state to another, as this is not a matter of harmonised law across the European Union. However, jury trials are not generally available in Europe for patent litigation.  

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Not applicable.

What role can and do expert witnesses play in proceedings?

The use of experts, their role in the proceedings and the weight given to their evidence varies widely across the European Union as this is a procedural matter for the courts of the country concerned and has not been harmonised. Many jurisdictions permit the parties to employ their own expert witnesses, and courts may also have the power to appoint independent witnesses to assist the court, particularly for complex technical or financial issues.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The extent of protection of a patent in Europe is dictated by Article 69 of the European Patent Convention (EPC), combined with the Protocol thereto. According to these provisions, account should be taken of equivalents when interpreting the claim scope.

Under Article 69: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

The Protocol to Article 69 (since its revision in December 2007) states:

(1) Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

(2) For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Nevertheless, while there has been a degree of statutory harmonisation under these provisions since 2007, the courts in individual countries have tended to develop their own jurisprudence as to how equivalents are to be interpreted and the weight accorded to them.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions are not governed by any harmonised EU laws or by the EPC. It is a matter of national law for each member state to determine whether preliminary injunctions are available and under what circumstances. Nevertheless, the majority of member states, including the major patent litigation jurisdictions, provide for some form of preliminary injunction. 

How are issues around infringement and validity treated in your jurisdiction?

There are two primary models for handling infringement and validity in the European Union. In some countries (eg, the United Kingdom), issues of infringement and of validity are considered together in a single trial. The validity issues are commonly raised as a counterclaim or as part of the infringement defence. The alternative to this is known as the bifurcated model, which is used in countries such as Germany. With bifurcation, the actions for infringement and validity are heard separately in different trial actions. Under the future unitary patent system, courts will be able to choose between hearing both issues as part of a single trial and bifurcating the issues of infringement and validity.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes. Although not binding and despite many instances of diverging decisions on similar issues among member states’ courts, it is common for courts to be informed of decisions in parallel proceedings in other member states. The weight given to such decisions, and those of the European Patent Office Boards of Appeal, varies among member states. European patent judges meet regularly to discuss common approaches and the causes of divergence. In general, the attitude of most courts is that harmonised decisions in parallel proceedings are desirable, although never at the expense of making a ruling that the judge believes to be wrong. 

Damages and remedies

Can the successful party obtain costs from the losing party?

This is purely a matter of national law and is not harmonised at EU level.

What are the typical remedies granted to a successful plaintiff?

While this varies from country to country, most member states will offer:

  • some form of permanent injunction following a finding of infringement;
  • monetary compensation (eg, recovery of damages or the infringer’s profits); and
  • delivery up or destruction of the infringing products. 

How are damages awards calculated? Are punitive damages available?

The calculation of damages is unharmonised and varies widely among the 28 member states.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

While this is not a matter of harmonised law, the granting of a permanent injunction is available as a matter of course in most member states following a finding of infringement.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The timescale for obtaining decisions varies widely among the 28 member states, as do the options for expediting trial. These variations make the choice of forum a matter of high importance when deciding on a European litigation strategy.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The costs of litigation vary widely among the 28 member states.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The rules and procedures for appeals are different in each of the 28 member states, and local advice should be sought. For example, while appeals from a first-instance decision are generally allowed in patent disputes within the European Union, national laws vary as to whether this can be a de novo case allowing new evidence or arguments, or whether it is a review of the correctness of the first-instance decision.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Mediation and arbitration are possible either by agreement between the parties or, in some cases, as a mandatory preliminary step before litigation commences. National laws vary as to whether the findings of such panels are binding. Due to the lack of harmonisation of the law relating to the enforcement of patents, the courts remain the dominant avenue for resolving disputes across the European Union.