European Patent applications can be submitted from all 38 current EPC member states, however, there is no central contact point for an appeal. Therefore the “Protocol of Recognition” determines responsibilities and primacy.
If an invention is applied for a patent at the European Patent Office by an unauthorized person, the person entitled can pursue the invention as his own, file a new patent application or apply for the unjustified application to be rejected. This is possible in all EPC Member States within the framework of Article 61 of the European Patent Convention (EPC).
Responsibility & primacy of the Protocol on Recognition
However, since applications can be submitted from all 38 current EPC member states, there is no central contact point where an appeal under Article 61 EPC can be lodged.
In any event, such an appeal must not be lodged with the EPO itself, as decided by the Enlarged Board of Appeal with the decision “Unauthorised applicant” (G 0003/92 of 13.06.2004).
Rather, the competent authority is the court or authority in whose district the non-authorised applicant has his registered office or place of residence (Art. 164 para. 1 EPC in conjunction with Article 2 of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition)); in this context, the respective member state is free to grant authorities the authority to decide on actions under Article 61 EPC; in this respect, the Protocol on Recognition does not differentiate between the terms “authority” or “court” in the following text.
This also applies if the applicant is resident in a country other than one of the EPC contracting states (Art. 3 Protocol on Recognition). The Protocol on Recognition takes precedence over conflicting legal norms in the respective contracting states and bilateral or multilateral agreements between the respective contracting states (Art. 11 para. 1 Protocol on Recognition).
If the invention is an employee invention, the competent authority is the court or authority in whose sphere the employee predominantly carries out his or her activity (Art. 4 Protocol on Recognition in conjunction with Art. 60 para. 1 sentence 2 EPC). However, the parties to the dispute may deviate from this provision by agreement (Article 5 (1) Protocol on Recognition), provided that national law permits this for employment relationships (Article 5 (2) Protocol on Recognition). If this is the case, the parties may determine any arbitrary court within the Contracting States.
In all other respects, the courts of the Federal Republic of Germany shall have exclusive jurisdiction (Art. 6 Protocol on Recognition).
Procedure for recognition
If actions are brought in several courts because of the same case, the court which was subsequently brought in has to declare itself ex officio incompetent (Article 8 para. 1 Protocol on Recognition) or to suspend the decision of jurisdiction until the court previously called upon has ruled on its own jurisdiction (Article 8 para. 2 Protocol on Recognition).
The decision of a member state on the complaint pursuant to Article 61 EPC is not reviewed again for legality in the procedure for recognising the decision, insofar as such a decision is necessary in the respective member state, except in the cases listed below (Art. 9 para. 2 Protocol on Recognition). Exceptions are:
- Lack of service: The unjustified applicant invokes an incorrect or so short-term service of the application that he could not adequately defend himself (Art. 10 lit. a Protocol on Recognition).
Divergent decisions in the same matter (Art. 10 lit. a Protocol on Recognition) - Furthermore, in the absence of conflicting provisions in the Protocol on Recognition, the respective national civil procedural rules will apply. In cases where a German court has jurisdiction, the local jurisdiction is therefore governed by §§ 12 et seq. of the German Civil Code (ZPO).
Recognized by all EPC member states
The decision given by a court of law of the contracting states on the right to claim the grant of a European patent (Art. 61 EPC) is recognized by all other contracting states (Art. 9 Protocol on Recognition). In Germany, no independent proceedings are generally required for this purpose. Civil law decisions are always considered to be legally binding as long as none of the prerequisites specified in § 328 ZPO exist; therefore, it can always be assumed that a decision of a court of an EPC member state on an action pursuant to Art. 61 EPC can also be recognised and enforced in Germany.
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