Disclaimer: The documentation used for this manual was developed in co-operation with EPLAW for the e-learning project “Patent litigation A–Z” in 2015. This is also published on the website of the European Patent Office. The information is not meant to be a comprehensive study or to provide legal advice. The references to European and national law and case law in this manual are presented for training and linguistic purposes and therefore are not meant to be substantive statements concerning patent litigation nor should they be considered the latest jurisprudence. This manual is not made available to the general public. It should be used for learning purposes only. Any views expressed in the chapters are not necessarily those of the EPO. This document may be used and reproduced for non-commercial purposes, provided that the EPO and the authors are acknowledged appropriately. Reproduction for commercial purposes is not permitted. European Patent Academy Introduction The overall aim of the EPO’s cooperation with its member states is to provide the users of the European patent system with relevant and high-quality patent-related services, to strengthen the European Patent Network and to promote the interoperability of the EPO and the stakeholders of the European patent system. To this end, the European Patent Academy, in cooperation with Principal Directorate European and International Cooperation, launched a languages training programme consisting of two projects: general language training and patent terminology training. The patent terminology training programme provides inter alia reference materials for further study of patent-related terminology. Manuals have been developed in co-operation with the three main language institutes (British Council, Institut français, Goethe-Institut) for all stakeholders of the European patent system including the EPO bodies, examiners in national patent offices, and professional representatives. The Judicial Training area of the European Patent Academy supports and develops training initiatives aimed at harmonising patent enforcement and litigation practice in Europe. This manual has been developed in co- operation with EPLAW, the European Patent Lawyers’ Association, and provides a unique overview of all aspects relating to patent litigation, both substantive and procedural, that arise in disputes. Additionally, you will find an annexed glossary with patent-related terminology in all three of the EPO’s official languages. This manual will be of interest for judges, patent attorneys, lawyers, academics, and legal staff of IP institutions. The European Patent Academy European Patent Academy | 3 What is a patent? Essentials: Patent fundamentals UK approach Dutch approach EU Unitary PCT and entry Patent Legal Scope of Priority Patent national phase procedure framework protection What is a French approach German approach patent Patent documentation Justification History SPCs Basic definition A patent is a legal title granting its proprietor the right to prevent third Product parties from commercially using an invention without authorisation. An An object, chemical or device; i.e. a physical thing invention is usually a product or a process. Process A method of making or doing something; The term of the patent is limited. a recipe Like other forms of intellectual property, the rights provided by a patent do not actually permit their owner to do anything. But they do enable him to stop other people doing things: they enable him to exclude others from practising the invention within the state in which they were granted. General considerations Patents are granted after successful application to, and examination by, Further information a patent office. This may be the national patent office of a state (e.g. the www.epo.org/ UK Intellectual Property Office, theDeutsches Patent- und Markenamt (Germany) or the Institut national de la propriété industrielle (France)). For those states that contract to the European Patent Convention (EPC), it may also be the European Patent Office (EPO) in Munich. Patents are currently domestic in nature. There is at present no such thing as a transnational patent. Even though applications for protection in multiple states may be made to the EPO, these become a bundle of national patents upon grant. Accordingly, the EPO has no jurisdiction to consider issues of patent infringement. That is left to the national courts. European Patent Academy Patent litigation. Block 1 | What is a patent | 7 There are currently 38 contracting states to the EPC, each having domestic patent legislation which in its essentials follows the corresponding provisions of the EPC. Patentability In order to gain patent protection, an invention must satisfy five Article 52 EPC fundamental requirements: Patentable Inventions (1) European patents shall be granted for (1) There must in fact be an invention. any inventions, in all fields of technology, provided that they are new, involve an (2) The invention must be new. inventive step and are susceptible of (3) It must possess a degree of inventiveness over what has gone before industrial application. (i.e. it must involve what is known as an inventive step). (2) The following in particular shall not be (4) It must be susceptible of industrial application. regarded as inventions within the meaning of paragraph 1: (5) It must not fall within a list of “excluded” subject-matter. (a) discoveries, scientific theories and mathematical methods; These fundamental requirements are set out in Article 52 EPC and are (b) aesthetic creations; replicated in the national laws of the EPO’s member states. (c) schemes, rules and methods for A patent has a maximum term of 20 years from the date of filing of the performing mental acts, playing games or doing business, and programs for patent application in the state in question. For it to stay in force for this computers; term, regular renewal fees must be paid. Failure to pay the renewal fees (d) presentations of information. may cause the patent or patent application to lapse. Introducing infringement A patent gives its owner the exclusive right to prevent third parties that Article 25 of the 1989 Draft CPC do not have the patent holder’s consent from performing certain acts Prohibition of direct use of the invention A Community patent shall confer on its with the patented invention within the territory in question. proprietor the right to prevent all third parties not having his consent: The restricted acts are derived from what is now Article 25 of the 1989 (a) from making, offering, putting on the market or using a product which is the Draft Community Patent Convention (CPC). The CPC never came into force, subject-matter of the patent, or importing but at the time that the original EPO member states were re-drafting or stocking the product for these purposes; their national laws to bring them into line with the EPC, it looked as (b) from using a process which is the subject-matter of the patent or, when the though it would. Accordingly, the states based their primary infringement third party knows, or it is obvious in the provisions upon it. The restricted acts include making, selling and using as circumstances, that the use of the process is prohibited without the consent of the well as importing or stocking for these purposes. Secondary infringement proprietor of the patent, from offering the is also possible. process for use within the territories of the Contracting States; (c) from offering, putting on the market, As already mentioned, at present there is no such thing as a transnational using, or importing or stocking for these patent. If an individual or company wants their invention to be protected purposes the product obtained directly by a process which is the subject-matter of in different states, they must ensure that they hold rights in each of the patent. those states. Producing the invention of a German patent in France (for example), or selling allegedly infringing products there, does not constitute infringement. It would, however, be an infringement to import infringing products made in France into Germany. European Patent Academy Patent litigation. Block 1 | What is a patent | 8 A brief history (Supplementary reading) UK approach Dutch approach EU Unitary PCT and entry Patent Legal Scope of Priority Patent national phase procedure framework protection What is a French approach German approach patent Patent documentation Justification History SPCs The patent system as we know it today is a relatively modern innovation. The idea of a patent office employing a corps of examiners to ensure that applications comply with the requirements for patentability was pioneered in the United States with the passage of the Patents Act of 1836. In the UK, substantive examination only came about with the Patents Act of 1902. Nevertheless, the idea of the use of monopoly privilege as an incentive to create or as a reward for creation is very old indeed. One of the earliest examples of this practice is found in the Greek city of Sybaris some 500 years BC. Sybaris was renowned for the luxurious lifestyle of its citizens, and the Sybarites are documented as having passed a law enabling the creator of a unique and excellent culinary dish to claim monopoly over that dish for one year, and to thereby reap all profit from its manufacture for this period. The intention appears to have been to induce confectioners and cooks to labour to excel. The first systematic use of monopoly that can lay claim to being a precursor to modern patent law is found in Venice in the late 15th century. The Statute of Venice of 1474 demonstrates a modern approach to the The Statute of Venice of 1474 protection of inventions. The preamble to the Statute declared that “We have among us men of great genius, apt to invent and discover ingenious devices; its intention was to provide protection so that “more men would then and in view of the grandeur and virtue of apply their genius [to create…] devices of great utility and benefit to our our city, more such men come to us every day from divers parts.