“How does patent law apply to you?” – Such and similar questions are frequently asked of many founders, especially among tech startups. However, only a select few have acquired this highly specific knowledge. This article aims to change this and enable founders to answer with something other than: “Oh, I’ll have to ask my lawyer first.”
A patent protects inventions. It’s a territorial and time-limited protection granted by a state for an invention that is novel and inventive. Granted for a maximum period of 20 years, the patent holder, i.e. the inventor, is solely entitled to produce, distribute or use the invention during that time. “Novelty” means that the invention must not have been published at the time the patent application was filed. Anything publicly available in any form up to this point in time is considered state of the art and therefore no longer new.
For example, discoveries, scientific theories or mathematical methods, the human body at its various stages of formation and development, the mere discovery of a new part of the human anatomy – including the sequence or partial sequence of a gene – computer programs or the reproduction of information are not considered to be inventions in the context of patent law.
Patent protection is generally only effective within the territory of the state that has granted the patent. If the Austrian Patent Office (ÖPA) is the issuer, the invention is only protected in Austria itself. In order to obtain patent protection in several states, multiple national applications are required. However, filing a large number of national applications can be avoided by opting for a so-called multiple application such as the European patent application. In this case, the invention must likewise be new, inventive and industrially applicable.
Despite the admittedly misleading name, a European patent is not an EU patent and isn’t valid for all member states of the European Union. Issued by the European Patent Office (EPO) upon request during the course of a standardized patent grant procedure in accordance with the European Patent Convention (EPC), European patents can be applied for in up to 42 countries.
Once granted, it has the same effect as a national patent in those states designated in the application and for which the respective national proceedings have been initiated. A designation fee must be paid for each designated state, but there is a maximum limit of seven designation fees for all 42 states.
Whether an inventor opts to apply for several national patents or a European patent naturally depends on the countries where they wish to exclusively use of their invention. Last but not least, it is also a financial decision, since a maximum of seven designation fees must be paid for the grant of a European patent.
A distinction must be made between the European patent and the so-called unitary patent, a “European patent with unitary effect.” It has been in preparation for some time now, but as of now, unitary patents have not been implemented due to disputes over jurisdiction, permissible languages and also due to Brexit.
One Patent to Rule Them All
The unitary patent, i.e. the European patent with unitary effect, will also be granted by the European Patent Office, and will have blanket effect for the territory of the participating member states of the European Union. So far, these are Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovakia, Slovenia, Sweden and Cyprus.
The participation of the United Kingdom is currently unclear due to Brexit; Croatia, Poland and Spain will not participate for the time being. The essential difference to the European patent is the obligatory territorial validity of the protective effect in all participating states.
To obtain a unitary patent, the inventor must file a European patent application with the European Patent Office and then request a European patent for some or all of the participating states. Once the European Patent Office has granted the European patent, the inventor may request the unitary effect within a period of one month from publication of the grant of the European patent in the European Patent Bulletin. By requesting unitary effect, the existing European patent becomes a unitary patent. As the name suggests, this offers uniform protection and equal effect in all participating states.
Given that the procedure for getting a unitary patent is the same as for a European patent, the costs incurred are identical. On average, the application procedure at the European Patent Office is around €5,620. However, the unitary patent would eliminate expensive translation costs and a large proportion of fees incurred after being granted a European patent.
Currently, inventors may only decide between individual national patents and the European patent. It is currently open when and how the unitary patent will come into effect.