No change to European patent system

In these times of change in relation to many things European, one thing that won’t change is how businesses protect their innovations.

A lot of people are surprised when I tell them that the UK is, and will continue to be, part of the European Patent Office (EPO).

The EPO is not an EU institution, so whatever happens to our relationship with the EU, the UK will continue to be an EPO member state.

The EPO opened its doors in 1977 and has now grown to include 38 member states, including all 28 EU member states, but also many non-EU countries such as Switzerland, Norway and Turkey. 

Protecting your innovations in 38 countries

If your business exports innovative products to any European countries, then a European patent provides an effective way of securing patent protection for your innovations across the whole of Europe. 

A single application provides pending patent rights in all 38 countries for as long as the application is pending, and after grant, your application becomes a national patent in those of the 38 countries you select.  For many countries you don’t even need to file a translation from English.

You can include the UK in your European patent application, but you also have the option of having an additional, separate UK patent application. 

This can be useful if you want to speed the process up in the UK and get a granted UK patent quickly, for example to take action against an infringer, or to secure UK “Patent Box” tax advantages.

It is possible to have a UK patent granted within a year by accelerating the process, whereas a European patent typically takes 3-5 years to grant.

HeraldScotland:

Representing you at the European Patent Office

Most European patent applications proceed to grant after a “to and fro” process of written correspondence between patent attorney and EPO examiner.

However, sometimes it is necessary to attend a hearing before a three-person examining division, to present arguments as to why the application should be granted. 

We at Murgitroyd have developed a wealth of experience in attending such hearings, with the support of our Munich office, which is located close to the EPO’s headquarters.

127,000 European patents were granted last year, and only a small number (4,000) were subsequently opposed by third parties.  We have an experienced team that helps clients through the opposition process, whether it is to defend their own patent, or to oppose a third party’s patent. 

Underpinning business success

As an example, we were pleased last year to help an Ayrshire company protect their key patent from third party challenges.  The patent, for a machine used in rail track maintenance, successfully underpins an international business and the opposition was defeated after a hearing in Munich. 

We were also able to assist another company in opposing a third party’s European patent for an oil and gas well tool.  The patent was revoked after a hearing in Munich, leaving the path clear for our client’s future developments.

Graham Murnane is a qualified UK and European Patent Attorney based in Murgitroyd’s Glasgow office.

We would be delighted to assist you in defining an intellectual property strategy to underpin your business. Talk today with our in-house experts from across our 15 European offices.

This article appeared in The Herald on the 15th April 2019. For more information visit www.murgitroyd.com