Grounds for Invalidity Applicable in All States
Grounds for Invalidity
The grounds for invalidity of a European patent are exhaustively listed in A138(1) EPC:
- The subject-matter of the European patent is not patentable under the following articles:
- 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 (within the meaning of A83 EPC);
- The subject-matter of the European patent extends beyond the content of the application as filed (A123(2) EPC) or, where the patent has been granted on the basis of a divisional application or a new application filed under Article 61, if the subject-matter of the patent extends beyond the content of the earlier application as filed (A76(1) EPC);
- The protection conferred by the European patent has been extended (A123(3) EPC); or
- The proprietor of the European patent was not entitled to obtain it (A60(1) EPC).
Partial Invalidity
Partial invalidity of a patent is possible (A138(2) EPC) and must be declared as an amendment to the claims. Thus, partial invalidity cannot involve merely amending the description or the drawings.
Possibility of Limitation
In national proceedings, the proprietor of the patent must be given the opportunity to limit the patent by amending the claims (A138(3) EPC) in order to address the objections raised. This limitation then serves as the basis for the proceedings. The limitation, of course, has retroactive effect (A68 EPC).
Relative or Absolute Invalidity
Regarding the last ground, some national laws consider this ground to be relative (i.e., it can only be invoked by the person who actually invented):
- German (Art. II§6 IntPatÜG),
- Dutch (Art 75(3)),
- Swiss (Art 28 of the Federal Act on Patents for Inventions),
- Spanish (Art 113 of the Patents Act),
- UK (Art 72 Patent Act),
- Swedish (Art 52)
French law is silent on this point (L614-12 CPI). After some hesitation (CA Lyon, 1st Civil Chamber, 2 December 2010, 09/08133), the Cour de cassation ruled that this ground for invalidity under A138(1) e) EPC was relative in France (C. Cass. com, 14 February 2012 n°11-14288).
Grounds for Invalidity Applicable in Certain States Only
National Prior Right
A European patent may, in a given contracting state, be opposed on the basis of a prior right (e.g., a national patent) in the same way as if it were a national patent (A139(1) EPC). Thus, a European patent may be revoked, limited, etc., in a state due to a right existing only in that state. In any case, the European patent may also constitute a national prior right (A139(2) EPC).
National Prior Right for Extension States
In extension states (« Extension of the effects of European patents to Slovenia« , JO 1994, 75, A7, which also governs other extension states), a European patent, if its extension official fee has been paid, is considered part of the prior art for subsequent national filings. Similarly, a national filing is considered part of the prior art for European patent applications extended to that country.
Cumulation of Rights
Where a national application/patent has been filed/granted in a contracting state, that state may determine the conditions for cumulation of protection with a European patent covering the same invention and benefiting from the same filing date (A139 EPC). For example:
- Possible cumulation of protections;
- Extinction of the application/patent and survival of the national part of the European patent;
- etc.
This cumulation is indicated in the national law relating to the EPC, Table X, column 1. In extension states (« Extension of the effects of European patents to Slovenia« , JO 1994, 75, A8, which also governs other extension states), the European patent takes precedence over national patents having the same date and protecting the same invention.
Different Sets of Claims
It is entirely possible to have different sets of claims if national rights exist. However, the search examiner will not specifically look for such prior rights (Guidelines B-VI 4.2).