Chapter 1. Causes of nullity valid for all States
Section 1.1. Causes of nullity
The causes of invalidity of a European patent are exhaustively listed in theA138 (1) EPC :
- the subject matter of the European patent is not patentable under the articles:
- the European patent does not disclose the invention in a sufficiently clear and complete manner for a person skilled in the art to perform it (within the meaning of A83 CBE);
- 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 issued on the basis of a divisional application or a new application filed under section 61, whether 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).
Section 1.2. Partial invalidity
Partial invalidity of a patent is possible (A138 (2) EPC) and must be declared as an amendment to the claims. Thus, a partial nullity can not involve only modifying the description or the drawings.
Section 1.3. Possibility of limiting
In national proceedings, the patentee must have the opportunity to limit his patent by amending the claims (A138 (3) EPC) in order to respond to the objections raised. This limitation then serves as a basis for the procedure. The limitation of course has a retroactive effect (A68 CBE).
Section 1.4. Relative or absolute nullity
Regarding the last ground, some national laws consider that this ground is relative (ie it can only be invoked by the person who actually invented):
- German (Art II§6 IntPatÜG),
- Netherlands (Art. 75 (3)),
- Switzerland (Art. 28 of the Federal Law on Patents),
- Spanish (Art 113 of the Patent Law),
- of the United Kingdom (Art 72 Patent Act),
- Swedish (Art 52)
French law is silent on this point (L614-12 CPI). After some procrastination (CA Lyon, 1st Civil Chamber, 2 December 2010, 09/08133), the Court of Cassation decided that this ground of nullityA138 (1) (e) EPC was relative in France (C. Cass. com, February 14, 2012 # 11-14288).
Chapter 2. Causes of nullity valid for certain States only
Section 2.1. Previous national law
A European patent may very well, in a given Contracting State, be subject to a prior right (eg a national patent) in the same way as if it were a national patent (A139 (1) EPC). Thus, a European patent may very well be revoked, limited, etc. in a State because of a right existing only for that State. In any case, the European patent may also be an earlier national right (A139 (2) EPC).
Section 2.2. Previous national law for extension countries
In the extension countries (" Extension of the effects of European patents to Slovenia », OJ 1994, 75, A7 which also governs the other extension countries), a European patent, if its extension fee has been paid, is considered as part of the state of the art for subsequent national applications. Similarly, a national application is considered to be part of the state of the art for extended European applications in that country.
Section 2.3. Cumulative rights
In the event that a national application / patent has been filed / granted in a Contracting State, that State may decide on the conditions of cumulation of protection with a European patent for the same invention and having the same filing date. (A139 EPC). For example :
- possible accumulation of protections;
- extinction of the patent application / patent and the survival of the national part of the European patent;
This cumulation is indicated in national law relating to EPC Table X, column 1. In the extension countries (" Extension of the effects of European patents to Slovenia », OJ 1994, 75, A8 which also governs the other countries of extensions), the European patent predominates over the national patents having the same date and protecting the same invention.
Section 2.4. Different sets of claims
It is quite possible to have several different sets of claims if national rights exist. Nevertheless, the Research Reviewer will not specifically look for this kind of prior rights (Directives B-VI 4.2).