Persons who can testify in principle
It's simple: everybody is entitled to file a European patent application! There is no nationality requirement contrary to the PCT.
Indeed, with regard to theA58 CBEany legal entity (according to the national law of this legal person) or physical entity may submit an application:
Any natural or legal person or any company assimilated to a legal person by virtue of the right to which it belongs may apply for a European patent.
Even an incapable person can file a patent application as long as his or her legal representative performs the acts.
Persons with the right to testify
Nevertheless, if everyone can to file an application that does not mean that everyone have the right to do.
Indeed, theA60 (1) EPC has:
The right to a European patent belongs to the inventor or his successor.
In this rather simple formulation, there are in fact real legal difficulties: how to know the successor if there is one? how to know if the patent has been validly surrendered?
Step 1: Identify the competent judge
Only a judge can decide who has the right to file a patent application. But which one?
This question is settled 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 A5 (1) PR). This situation is possible between an employee and an employer only if the national law governing the employment contract authorizes it (see A5 (2) PR),
- failing that, if the invention is an invention of an employee (see A4 PR):
- the courts of the Contracting State in which theemployee carries on his main activity, or
- if it can not be determined, the courts of the Contracting State where the employer's establishment is located (A60 (1) EPC),
- failing that, the courts of the Contracting State in which the holder at his domicile or registered office (see A2 PR),
- failing that, the courts of the Contracting State in which the person applying for the patent right at his home or headquarters (see A3 PR),
- failing that, the courts of theGermany (A6 PR).
The court seised must verify whether it is actually competent (A7 PR). The EPO has no discretion in this matter.
I draw your attention to the fact that the competent courts born can be a jurisdiction of a Contracting State: no US jurisdiction, Chinese, etc. can not be competent. Note, however, that if such a court makes a decision, it would be possible to have the decision recognized by a court of a Member State by exequatur.
Step 2: Identify the relevant law
As you probably know, the identification of the competent judge does not necessarily determine the relevant law. Indeed, a French judge can very well apply a foreign law, by application of " conflict of laws rules ».
That's what can happen here ...
- If a jurisdiction of a country of the European Union is competent (see above), the European Regulation 593/2008 says "Rome I" apply. This regulation (in force since December 17, 2009) states that the applicable law is:
- the designated law by the will of the parties (eg specific clause of the contract, see Article 3),
- in the absence of any indication, the law of the seller's country of residence (and not the law of the country of the seller's nationality, see Article 4).
- If not (ie the competent jurisdiction is Turkish, Swiss, Norwegian, Icelandic, etc.), one must look for " conflict of laws rule "In force in these countries.
Special case of employee inventions
In the particular case of employees' inventionsthere is a conflict of law rule directly in the EPC (and it is rare enough to raise it).
Indeed, theA60 (1) EPC provides that, in this particular case, the applicable law is:
- the law of the State in which the employee carries on his principal activity,
- or if this cannot be determined, the law of the State in which the employer's establishment is located.
Several people carrying out 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 one who files first (priority date, A60 (2) EPC).
Nevertheless, if one of the people abandons his request before publication, the right is passed to the next (J5 / 81).
There may be some very special cases in which several persons have made the invention independently of each other, and have filed a patent on the same day. In this situation, each person has a right to the EPC patent and each application will proceed as if the other did not exist. In case of issuance and exploitation, each of the holders will have to obtain a license from the other (G-IV Guidelines 5.4).
Proof of authorization before the EPO
Of course, as you will understand, these "right to deposit" issues are complex.
Thus, in order to save time and money, the EPO has decided not to check at each filing that the applicant is entitled to apply for a patent (A60 (3) EPC).
If a dispute arises during the investigation of the application (see Inventions filed by an "unauthorized" person), it will always be time to react ...
Several applicants and co-applicants
There may be a plurality of applicants for a patent application (A59 EPC).
We speak then :
- of plaintiffs if all applicants designate the same Contracting States;
- of several applicants if certain applicants designate different Contracting States.
Nevertheless, for the purposes of the procedure, applicants are always considered as plaintiffs before the Office (A118 EPC) to avoid any complexity.
In the same way, the EPO wants to have only one interlocutor (common representative) in order to avoid any problem of communication and any misunderstanding.
This common representative is (R151 EPC):
- the person designated as such in the request for grant (R41 (3) EPC);
- failing this, the representative of the applicant first named in the request;
- failing this, the agent of another applicant who must constitute one for the continuation of the procedure;
- failing that, the applicant first mentioned in the request.
Nevertheless, the request for grant must be signed by all applicants or their representative. The common representative may act on behalf of the applicants only after such signature (Directives A-VIII 1.3).
The applicant may be represented before the Office by an agent in order to perform all the acts necessary for filing.
Nevertheless, this representation is optional for acts relating to the filing of the European patent application, even if the applicant is not resident in one of the member countries of the Convention (A133 (2) EPC).