Patently Strategic Podcast: European Patent Practice

In a globalized economy, it’s essential to understand that patents are still nationalized documents. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities in Europe, Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will typically need a patent granted in each relevant country. This can boil down to filing and prosecution on a per-country basis. However, those seeking protection in Europe do have some additional options for a single application granting protection in multiple nations!

Single European Application, Multiple Nations

Thirty-nine contracting nations of the European Patent Convention—a separate treaty more inclusive than EU membership—have organized a unified European Patent Office (the EPO). Instead of applying directly to the national patent offices, you may file a single application with the EPO. That office then examines the case, and upon its allowance of the claims, you may then pay a validation fee for each member country of your choosing (plus any further translation costs) to obtain a proper national patent in each of those countries.

And as the panel will discuss, there’s also more recently, an additional or alternative form of patent protection available in Europe under the Unitary Patent, where 18 signatory countries have agreed to have one forum for patent proceedings resulting in one decision that is enforceable across all 18 countries. Given many strategic factors, understanding your options is key to securing robust international protection for your inventions.

Episode Overview

This episode is part two of a series we’re doing on International Patenting and follows Ashley’s exceptional Travel Guide to Foreign Protection from earlier this season.

To help navigate the very complicated European landscape, we reached out to a good friend of Aurora’s—Dr. Will Doherty with Albright IP. And we’re so glad we did. In this episode, Will puts on an absolute masterclass on European patent practice.

Will leads today’s discussion with our all-star patent panel, delving deeply into all things European Patent Practice. Along the way, Will and the panel discuss:

• European patent process, EPO participating countries, key players in the system, and how it all compares to USPTO and PCT processes.
• Strategic considerations around filing in individual countries vs. using EPO, translation implications, cost considerations, fee timelines, filing timeline implications, market alignment, and rights enforcement.
• Interplay with newer Unitary Patents and the Unitary Patent Court.
• Key practitioner takeaways, including some insightful claim drafting tips for medical-type applications, which are viewed very differently in Europe than in the U.S.

Brief European History Lesson 

When delving into any new topic on the podcast, we often joke about trying to trace concepts back to the Big Bang. This approach is invaluable for building context. We did this with Professor Mossoff in our Why Patents Exist episode, which primarily focuses on the genesis of the U.S. system, but Will does this beautifully for today’s story on the other side of the Atlantic. The conversation is highly practical and instructive, but Will kicks it all off by delving into the rich tapestry of European history and how nationalism, warfare, and subsequent socio-political shifts heavily influenced the creation and adaptation of legal systems across Europe. Tracing all the way back to the Napoleonic era, Will provides a highly entertaining, fast-paced historical framework for understanding the continent’s diverse legal traditions, which manifest in significant, strategy-impacting ways even today.

Guest Host: Dr. Will Doherty

Beyond being a great teacher with a sharp sense of classic British humour (he made me spell it that way), Will is an experienced Chartered British Patent Attorney, European Patent Attorney, and IP Litigator.

Discussion Panel

Will is joined today by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Tiffany Miller, Patent Strategist at Aurora
• Albert Du, Patent Strategist at Aurora

Mossoff Minute: Price Controls on Standardized Technologies

In this month’s Mossoff Minute, Professor Adam Mossoff is discussing an issue that could cause huge problems in Europe and for the global innovation economy, more broadly. In addition to Adam’s comments being included within the podcast, we’re publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

We’d also like to congratulate Adam for being asked to join the United States Patent and Trademark Office (USPTO) as a Senior Advisor, where he’ll be working on legal and policy matters in the patent system – we can’t think of anyone better for a seat at the table in these critical times. No one has a better command of the history, the law, or where we need to take the system to get back to a gold standard. We do note, however, that views expressed on the Mossoff Minute are Adam’s personal views and not necessarily those of the USPTO.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• International Patents Part 1. Our introductory episode on international protection exploring the intricacies and nuances of ensuring your patent rights are protected everywhere they matter.
• Why Patents Exist. Focuses on the genesis of the U.S. system. Will does this beautifully for today’s story on the other side of the Atlantic.
• Patent Prosecution Timeline. Detailed prosecution timeline outlining the duration from filing to issuance, including ranges for PCT, Paris Convention, and national examination.
• License to File. Explores Foreign Filing License Risks and Strategies.
• Foreign Filing License Requirements, by Country. Many countries, including the U.S., require inventors to receive special permission to file with patent offices outside of the inventor’s – or invention’s – country.