Salzburg entrepreneur M. has developed a novel foldable solar shower designed specifically for campsites, vacation homes, and marinas. The shower consists of ultra-light panels that can be set up in a few minutes and heat the water particularly quickly thanks to an innovative pipe system. Customers appreciate the solution because it can be used independently of power connections, even in remote vacation spots.
His sales market has so far been concentrated in Austria, Germany, Switzerland, and the Netherlands, where camping and outdoor vacations are very popular. He wants to secure patent protection in these countries, as this is where most of his buyers are located and cheap imitation products pose a considerable risk.
At the same time, he is receiving more and more orders from retailers in Turkey who want to use his solar shower on beaches and in resorts. As Turkey is an important tourism market, M. is considering applying for patent protection there as well in order to secure his lead over local manufacturers.
He is now faced with the question of how he can optimize his patent strategy regionally: Should he limit himself to his core markets in Europe, or is it worth including Turkey in his protection strategy in order to secure the growing tourism market there as well?
Rationale
Both the priority right and the international application offer the advantage of being based on a single application. Over time, however, many property rights with different areas of protection arise. For the applicant, this means that he must go through several national procedures in order to obtain patent protection in different countries, which causes additional effort and costs.
In the case of M and his foldable solar shower, this means that although he started with a single initial application, over time many individual property rights would arise in different countries. For Austria, Germany, Switzerland, and the Netherlands, he would have to conduct national procedures in each country—each with its own formalities, fees, and deadlines. If he wants to include Turkey in his protection strategy, there is the additional hurdle that the application must be filed in Turkish. Since M does not speak this language, he would have to rely on translators and local patent attorneys. This not only incurs additional costs, but also carries the risk of different versions and interpretations of his application, depending on the country in which he applies for protection. It thus becomes clear to M that the national procedure can be very costly and confusing.
In the 1970s, it was recognized that patenting costs in Europe were considerably higher than in the US. While a single procedure led to a patent in the US, in Europe, a market of approximately the same size, around 20 national procedures in different languages were required. To eliminate this disadvantage, the European Patent Office (EPO) was founded as part of the European Patent Organization (EPO). The EPO is an international organization that also includes non-EU countries such as Norway, Switzerland, and Turkey. The aim of the European patent system was to create a uniform procedure in which the EPO grants a patent for all contracting states in a central procedure.
For M, the European patent system has a clear advantage: Instead of having to go through a separate national procedure in each country—with translations, different formalities, and high costs—he can register his solar shower in a central procedure at the European Patent Office (EPO). This procedure covers not only his core countries of Austria, Germany, Switzerland, and the Netherlands, but also Turkey, which is a member of the European Patent Organization. This saves M. the tedious task of filing a national application in Turkish and the risk of slightly different versions of his application being created in each country. Instead, he receives a uniformly examined patent that has the same basis in all selected countries and thus offers consistent protection. For M., this means lower costs, less effort, and greater legal certainty for marketing his invention.
Filing and Procedure
The European patent application is filed in one of the three official languages of the EPO – German, English, or French. The EPO examines the application centrally for all contracting states. The examination procedure is similar to that for national applications. First, formal requirements are examined, and the applicant must pay a fee for the application and the search.
M submits his European patent application in German, as he is fluent in this language and does not feel confident in English. This has the advantage for him that he can understand all communication with the European Patent Office without the need for translation. Once the formal requirements have been checked and the application and search fees have been paid, the EPO prepares a search report with the relevant publications on the state of the art. This report is also sent to M in German, so that he can immediately understand what obstacles his invention might face in the examination procedure.
A special feature of the European procedure is that, after receiving the search report, the applicant can decide whether to continue the procedure and pay the examination fees. If he decides to continue, the examination procedure begins, during which the patentability of the invention is discussed. This substantive examination is usually conducted in writing, but the Office must hear the applicant when making substantive decisions, usually by videoconference. If a patent is granted, the patent claims are translated into the three official languages of the EPO.
After receiving the search report, M decides to continue the procedure because he is convinced that he can persuade the office of the patentability of his invention. He pays the examination fee and, in the subsequent procedure, manages to overcome the objections by slightly restricting his claims. This means that the patent is likely to be granted.
Now, although he filed his application in German, M must also translate the patent claims into English and French. This obligation applies regardless of the countries in which he later wishes to claim protection. The reason is that the European Patent Office has three official languages (German, English, and French) and the patent claims, as a central part of the property right, must be available in all three languages. The rest of the description, however, does not need to be translated.
Validation of the European Patent
Once granted, the European patent becomes the national property of the contracting states. Individual states may still require translations to be submitted in order to ensure the national validity of the patent. Although these requirements have been reduced in recent years, they can still incur considerable costs.
However, this “validation” does not involve any substantive examination by the national office; the version approved by the European Patent Office is valid in all countries. Unlike international patent applications and subsequent priority applications, the European patent has the same scope of protection in all countries after it has been granted.
After grant by the EPO, the European patent is “validated” as national property rights. This means that although there was a central examination procedure, the enforcement and maintenance of the patent is now the responsibility of the individual contracting states. Each state can impose its own requirements, such as the submission of translations or the payment of special fees.
M is fortunate in the case of Germany, Austria, and Switzerland: here, the German language of the proceedings is sufficient and no further translations are necessary. In Turkey, on the other hand, a complete translation of the patent specification into Turkish is required to ensure national validity. M must therefore appoint a Turkish representative to submit the translation to the Turkish Patent Office. In addition, fees are charged for the publication of the translation in Turkey.
National patents resulting from a European application must be enforced separately in each country. Infringement and nullity proceedings are regulated at the national level, and annual fees must be paid individually in each country. The applicant can also decide in which countries he wishes to maintain the patent by ceasing to pay the annual fees in certain countries.
For M, this means that after it is granted, his European patent “breaks down” into several national patents, each of which is subject to the law of the individual contracting states. This has several practical consequences:
If a competitor in Germany uses the patented invention, M must sue for injunctive relief and damages in a German court. For an infringement in Turkey, on the other hand, he would have to take legal action in a Turkish court.
Similarly, a competitor in Switzerland or Turkey can initiate nullity proceedings. The validity of the patent is decided after grant before the national offices or courts.
To maintain the patent, M must pay separate annual fees in each country. He can therefore decide for himself in which countries protection is still worthwhile. If, for example, sales in Turkey do not develop as expected, he could stop paying the fees there, so that the patent expires there while remaining in force in AT, DE, and CH.
After a European patent has been granted, any third party can file an opposition against the patent within nine months. This opposition is filed centrally with the EPO and can lead to the patent being restricted or revoked. The decision in the opposition proceedings applies to all national patents resulting from the European application.
If a Turkish competitor T files an opposition against M's patent directly with the EPO, there is a central procedure concerning the validity of M's patent. The procedure is conducted centrally by the EPO, not before the national offices. The EPO examines the opposition and decides whether the patent will be maintained, restricted, or revoked.
In M's case, it is decided that the patent can only be maintained in restricted form. This restriction applies automatically to all countries in which the European patent is in force—including Austria, Germany, Switzerland, and Turkey. The patent is then republished in amended form.
As a result, M loses part of his property rights not only in Turkey, but also in the other countries. He cannot have broader protection in one country and narrower protection in another. The opposition procedure is therefore a uniform course of action for all countries.
Combination with Priority Rights and PCT
European patent applications can be combined with priority rights. This means that they can be used both as initial applications and as subsequent applications. If a European application serves as a subsequent application, the applicant can, for example, file a first application in another country such as the US and file a European subsequent application within 12 months to extend protection to Europe. However, a European patent application can also serve as a first application, the priority right of which can be claimed by another patent application.
M could first file a national application with the Austrian Patent Office. This is cheaper and gives him an immediate filing date. Within 12 months, he could then file a European patent application with the EPO, claiming the priority right of the Austrian application. His priority date would thus be backdated to the date of the Austrian application.
However, M can also file his invention directly with the EPO, thereby creating a European first application. On this basis, he could then, also within 12 months, file a US patent application claiming the priority right of the EP application. This would give him the same priority date in the US as in Europe.
The European patent application is also part of the international patent system. After the 30-month international phase has expired, the EPO can be included in the international application as a “regional phase.” This enables the applicant to obtain European patent protection via a single international application. (Euro-PCT application)
M could first file an international application (PCT). After the international phase (30 months) has expired, he decides in which countries he will enter the national phase. The EPO can be selected as the regional phase. This gives M the opportunity to obtain patent protection throughout Europe at a later date with just one international application.
Conversely, M can also file a European application first. This can then serve as a priority application for a PCT application. Within the 12-month priority period, M files the international application and claims the priority of his European application. On the basis of the PCT application, he can then apply for protection in the US, Japan, or Canada, for example.
First pages of European patents provide important information about the application and the territorial scope of the European patent. Among other things, they contain details of priority rights and the countries concerned.
The European patent application shown here was published with the document code A1, as it was published together with the search report. The document code B1 refers to a publication on the occasion of the grant. The data is provided in the same way as for other patent publications. For European patents, there is a list of countries for which this application or patent is valid at the time of grant. However, this information does not indicate whether the patent has been validated in all countries.
The Unified Patent
Since June 1, 2023, in addition to the system of national validation, there has been the option of obtaining a European patent with uniform effect in several EU countries. This means that the patent is valid as a single property right in all participating countries and is no longer treated as a national patent in these countries.
M could apply for the unitary patent after it has been granted by the EPO. The patent would then automatically be valid in all participating EU countries – not only in Germany, Austria, and the Netherlands, but also in countries such as France, which he might not have specifically chosen. However, Turkey and Switzerland are not part of the system as they are not members of the EU. M must therefore validate his European patent separately in these countries, i.e., submit translations, appoint representatives, and pay annual fees.
A unified court system has been created to enforce such patents, which is responsible for infringement proceedings and nullity actions. This court can make decisions that apply equally in all participating states.
Enforcement would be uniform in these countries: if a competitor in Germany, Austria, or the Netherlands commits an infringement, M could take action against them before the Unified Patent Court (UPC). The judgment would apply to all participating states simultaneously. In Switzerland and Turkey, however, M would have to conduct separate national infringement proceedings.
