From the European Patent to a Community Patent

8 Colum. J. Eur. L. 19 (2002)

Vincenzo Di Cataldo. Vincenzo Di Cataldo is a Professor of Business Law at the Law School of the University of Catania, Italy and was a BNL Visiting Professor of Law at the Columbia University School of Law, Autumn 2000.

The European Patent Convention (EPC), also known as the Munich Convention, was signed in Munich, Germany, on October 5, 1973 and became effective on October 7, 1977. The EPC has played a very important role in the recent developments of European intellectual property law and has been an important step towards the harmonization and unification of European patent law. Remarkably, all the European States amended their national patent laws after the enactment of the EPC, which in turn has led to a harmonization among the national patents not easily imagined before its enactment. Fortunately, at least one aspect of European patent law, the rules governing the patent application and examination procedure, finally has a unified set of rules thanks to the EPC.

The EPC was supposed to be only the first step, a provisional tool. As a Convention intending to partially harmonize and partially unify European patent law, the EPC was to be followed by a further step, a more advanced tool. In fact, that tool was crafted not after the work concluded on the EPC, but before. That tool, the second step, was supposed to be the Community Patent Convention (CPC), also known as the Luxembourg Convention, signed in Luxembourg on December 15, 1975. But this second Convention has never become effective. The main reason the two step process of harmonizing and unifying European patent law failed was that the European Commission thought the CPC would be able to accomplish these goals, when in fact, the CPC has proved not at all fit for this task. So, although the EPC itself has accomplished its own goals, the system envisioned from the two interacting Conventions has failed to materialize.

This unfortunate situation has forced Europe into a deadlock that can only be broken by revitalizing the Community Patent. But to achieve this goal, Europe must find a new and different mechanism. The proper tool can only be a new Regulation issued by the European Community. This article will explore the reasons for the present stalemate and explore ways in which to break it.

The EPC was born out of the European Community. Although the EPC was signed in October of 1973, its first drafts date back to the early 1950s. Therefore, the first drafts of the EPC are contemporaries of the first works aimed at creating the European Communities themselves.4 Some European States not interested in joining the European Economic Community at its inception actively attended, at different times, the talks aimed at developing a European Patent.5 For this reason, the drafters of the EPC were well aware, especially in the last years of their long-lasting negotiations, they did not wish to create a Convention dependent upon the structure of the European Communities.

The main structure of the EPC is well known. It does not create a single patent system for all of Europe, but only a single granting system. Accordingly, it establishes a European Patent Office (EPO) in Munich, Germany, and provides a set of rules of procedure for the examination of the patent application. Moreover, it contains important, although limited, substantive law covering mostly the criteria for patentability. This result was an outgrowth of the victory, quite unexpected in those days, of the supporters of the “maximum approach” over the supporters of the “minimum approach.” The latter thought the EPC should rule only the examination procedure, while the former believed, on the contrary, that the examination procedure itself would only be useful in conjunction with a common nucleus of substantive law covering the conditions for patentability.

Once a patent is granted under the EPC, it does not become a single patent. Rather, it becomes a bundle of national patents, one for each Contracting State that is designated in the patent application. The commonly used language refers to “national fractions of the European Patent,” but, in fact, there is no single European Patent. Instead, there are multiple national patents collectively referred to as a “European Patent.” When used to refer to an already issued patent, the European Patent is nothing more than a subtly misleading term which serves as a moniker for the multiple different national patents.

The various fractions of the European Patent have almost nothing in common. They share only the few substantive rules about the conditions of patentability fixed by the EPC. For the remainder of the substantive law, each individual Contracting State’s patent law governs that State’s fractional share of the European Patent. For instance, there is nothing in the EPC addressing the law of employed inventors, the law of co-ownership of the invention, or the law of remedies. These points, not of minor importance in the structure of patent law, have been left entirely to the laws of each individual European State.

In addition, the competence for every dispute arising from a European Patent has been given to the national courts of each Contracting State. This competence includes both disputes arising on points governed by individual national laws and disputes arising from points directly regulated by the EPC that must be settled in accordance with the EPCs substantive law.

Notwithstanding its astonishing success, which can be measured by the flow of patent applications, it is easy to identify major problems with the EPC.