les Nouvelles Article of the Month

When To Sue—Using An EP Application

Xavier Vallvé

Barcelona, Head of Patent and Valorization Office,
European Patent Attorney
Bellaterra, Spain

There are different issues to take into account when deciding the correct moment to sue a possible infringer. One of these elements is the status of the patent or patent application which is to be used.

This paper tries to explain the possibility and effects of suing an infringer at the different stages of prosecution for a European patent or patent application, i.e., before publication, after publication but before grant and after grant.

It is to be considered that the infringement of a European patent or patent application is dealt by national law, although the infringement procedure started in one state may have effects in other states by means of the European Execution Treaty.

1. Before Publication

The rights conferred by the EP application are effective from the moment of its publication.¹ However, the applicant could have interest in invoking his rights before the publication (a warning to a possible infringer), since in some countries the communication of the existence of the application to a possible infringer establishes liability for damages (e.g. Spain²).

However, invoking the rights of the application before publication opens the possibility for the alleged infringer to inspect the files of such application without the consent of the applicant.³ The applicant is informed of the identity of the person making the request to inspect files and the decision is only taken once the applicant has been heard. Normally, until the EP application is published, the files can only be inspected with the consent of the applicant.

2. After Publication but Before Grant

The rights conferred by a European patent application are effective from the moment of its publication. Such rights are in principle the same as those of a granted patent, but each contracting state can decide in a reduced protection (see Table 1). However, such rights cannot be less than those conferred by a published national patent. Additionally, each state shall ensure at least that, from the date of publication of a European patent application, the applicant can claim compensation reasonable in the circumstances from any person who has used the invention in that state in circumstances where that person would be liable under national law for infringement of a national patent.⁴

The protection is determined by the claims as published. In case the patent application is refused, withdrawn or deemed withdrawn, it is considered that the application never had provisional protection.⁵

Since the patent application is published in English, French or German, it is possible that the language of publication is not the official language of a contracting state of the EPC. In those cases, it is necessary that a translation of the claims into the official language of that state is made available to the public or communicated to the alleged infringer.

According to the last edition of the National Law relating to the EPC (15th Edition), all Contracting States except Malta and Switzerland require a translation into one of its official languages.

National judges will not normally pursue a case solely on provisional protection. However, in most states the provisional protection establishes a liability for damages.

Using a patent application can draw attention to the existence of the same and allow the potential infringer to attack the validity of application before the EPO. At this stage, the infringer can file third party observations.⁶ Third party observations can be filed by any person and must contain a statement (and evidence) against the patentability of the invention (i.e., patentable inventions, exceptions to patentability, novelty, inventive step, industrial application). Third party observations must be taken into account by the EPO as long as the proceedings before the EPO are still pending.

3. After grant The rights conferred by a granted European patent in a state are the same as those conferred by a granted national patent in that state.⁷

Most countries recognize in their law that infringement occurs when a third party, without consent of the proprietor, makes, sells, offers for sale, uses or imports a product which is covered by the scope of the claims, or even keeps it ready for sale.

National courts are responsible for dealing with infringement issues regarding EP patents, and the EPO can only give a technical opinion on request.⁸

Additionally, the opposition period starts after publication of the mention of grant.⁹ During this period, an opponent can oppose the grant of the patent on the basis of the opposition grounds (i.e., the patent does not meet the patentability requirements, it extends beyond the scope as originally filed or it has a lack of sufficient disclosure). The opposition is held at the EPO (even if the patent has already been validated in the different Contracting States) by the Opposition Division, therefore, it allows to revoke the patent with one single procedure.

If the patent proprietor chooses to sue the infringer during the opposition period, he opens the possibility that said infringer files a notice of opposition to try to revoke the patent used against him.

The opposition period expires nine months from publication of the mention of the grant of the EP patent.¹⁰ However, even if the opposition period has lapsed, a third party can file a notice of intervention¹¹ and become a party in the opposition proceedings and therefore try to revoke the patent in case opposition proceedings are pending. Notice of intervention can be filed by an assumed infringer of the patent and he must prove that proceedings of infringement have been instituted against him or that the proprietor of the patent has requested him to cease alleged infringement of the patent and that he has instituted proceedings for a court ruling that he is not infringing the patent.

Therefore, suing an infringer after grant but within the opposition period, or even later if opposition proceedings are running, opens the possibility for the infringer to try to revoke the patent in central proceedings (before EPO).

Once the opposition period has lapsed, and no opposition has been filed or is pending, the only possibility to revoke the patent is at national proceedings. A European patent may be revoked with effect for a contracting state only on the grounds that the subject matter of the European patent is not patentable, the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, the subject-matter of the European patent extends beyond the content of the application as filed the protection conferred by the European patent has been extended, or the proprietor of the European patent is not entitled.¹²

In summary, it is possible to start infringement proceedings at different stages of prosecution, not only after grant, but the patent owner should be aware that invoking his rights according an European patent or patent application gives the alleged infringer some possibilities, depending on the prosecution stage, to try to invalidate or revoke the patent used against him. On the other hand, a party which has been warned or accused of infringement should know that possible strategies depend on the prosecution stage of the patent or patent application.

1. Article 67(1) European Patent Convention (14th Edition).
2. Article 59.2. Ley 11/1986, de 20 de marzo, de Patentes.
3. Article 128(2) European Patent Convention (14th Edition).
4. Article 67(2) European Patent Convention (14th Edition).
5. Article 67(4) European Patent Convention (14th Edition).
6. Article 115 European Patent Convention (14th Edition).
7. Article 64(1) European Patent Convention (14th Edition).
8. Article 25 European Patent Convention (14th Edition).
9. Article 99 European Patent Convention (14th Edition).
10. Article 99(1) European Patent Convention (14th Edition).
11. Article 105 European Patent Convention (14th Edition).
12. Article 138 European Patent Convention (14th Edition.)