The Applicant
Persons Generally Entitled to File
It is quite simple: anyone is entitled to file a European patent application! There is no nationality requirement, unlike under the PCT.
Indeed, under Article 58 EPC, any legal entity (according to the national law governing that entity) or natural person may file an application:
Any natural or legal person, or any body equivalent to a legal person under the law governing it, may file a European patent application.
Even a legally incapacitated person may file a patent application, provided that their legal representative performs the necessary acts.
Persons Having the Right to File
However, while anyone may file an application, this does not mean that everyone has the right to do so.
Indeed, Article 60(1) EPC states:
The right to a European patent shall belong to the inventor or their successor in title.
Behind this seemingly simple wording lie significant legal complexities: how can one identify the successor in title, if any? How can one determine whether the patent has been validly assigned?
Step 1: Identifying the Competent Court
Only a court can decide who has the right to file a patent application. But which one?
This question is governed by the Protocol on Recognition of 5 October 1973 (or PR).
The competent courts are:
- the courts of the contracting state designated in writing by the parties (see Article 5(1) PR). This situation is only possible between an employee and an employer if permitted by the national law governing the employment contract (see Article 5(2) PR),
- failing that, if the invention is an employee invention (see Article 4 PR):
- the courts of the contracting state in which the employee carries out their main activity, or
- if this cannot be determined, the courts of the contracting state in which the employer’s establishment is located (Article 60(1) EPC),
- failing that, the courts of the contracting state in which the proprietor has their domicile or registered office (see Article 2 PR),
- failing that, the courts of the contracting state in which the person claiming the right to the patent has their domicile or registered office (see Article 3 PR),
- failing that, the courts of Germany (Article 6 PR).
The court seized must verify whether it is indeed competent (Article 7 PR). The EPO has no power of assessment in this matter.
I draw your attention to the fact that the competent courts can only be a court of a contracting state: no U.S., Chinese, or other court may be competent. However, if such a court were to issue a decision, it would be possible to have that decision recognized by a court of a member state through exequatur.
Step 2: Identifying the Applicable Law
Principle
As you are likely aware, identifying the competent court does not necessarily determine the applicable law. Indeed, a French court may well apply foreign law, by application of « conflict of laws rules. »
This is, in fact, what may happen here…
- If a court of a European Union country is competent (see above), Regulation (EC) No 593/2008, known as « Rome I » applies. This regulation (in force since 17 December 2009) provides that the applicable law is:
- the law chosen by the parties (e.g., a specific contractual clause, see Article 3),
- in the absence of any indication, the law of the country of the seller’s habitual residence (and not the law of the country of the seller’s nationality, see Article 4).
- Otherwise (i.e., the competent court is Turkish, Swiss, Norwegian, Icelandic, etc.), the « conflict of laws rule » in force in those countries must be sought.
Special case of employee inventions
In the special case of employee inventions, there is a conflict of laws rule directly set out in the EPC (which is sufficiently rare to be noted).
Indeed, Article 60(1) EPC provides that, in this particular case, the applicable law is:
- the law of the State in which the employee carries out his or her principal activity,
- or, if this cannot be determined, the law of the State in which the employer’s establishment is located.
Several persons making the invention independently of each other
If several persons have made the invention independently of each other, the right to the European patent belongs to the person who files first (priority date, Article 60(2) EPC).
However, if one of the persons abandons his or her application before publication, the right passes to the next in line (J 5/81).
There may be very specific cases where several persons have made the invention independently of each other and filed a patent on the same day. In such a situation, each person does have a right to the patent under the EPC, and each application will proceed as if the other did not exist. In the event of grant and exploitation, each proprietor will need to obtain a license from the other (Guidelines G-IV, 5.4).
Proof of entitlement before the EPO
Of course, as you will have understood, these questions of « right to file » are complex.
Thus, in order to save time and money, the EPO has decided not to verify, at each filing, whether the applicant is duly entitled to file a patent (Article 60(3) EPC).
If a dispute arises during the processing of the application (see Patents filed by an « unentitled » person), there will still be time to react…
Multiple applicants and co-applicants
A plurality of applicants may exist for a patent application (A59 EPC).
The following terms are used:
- co-applicants if all applicants designate the same contracting states;
- multiple applicants if certain applicants designate different contracting states.
Nevertheless, for procedural purposes, applicants are always considered as co-applicants before the Office (A118 EPC) to avoid any complexity.
Similarly, the EPO wishes to have only one point of contact (common representative) to avoid any communication issues or misunderstandings.
The common representative is (R151 EPC):
- the person designated as such in the request for grant (R41(3) EPC);
- failing that, the representative of the applicant first named in the request;
- failing that, the representative of another applicant who must appoint one for the further procedure;
- failing that, the applicant first named in the request.
Nevertheless, the request for grant must be signed by all applicants or their representative. The common representative is only authorized to act on behalf of the applicants after this signature (Guidelines A-VIII 1.3).
The representative
The applicant may be represented before the Office by a representative to perform all necessary acts for the filing.
Nevertheless, this representation is optional for acts related to the filing of the European patent application, even if the applicant is not a resident of one of the member countries of the Convention (A133(2) EPC).