European Patent Practice

By: Josh Sloat

​What are your options for protecting inventions across Europe? In this month’s episode, we’re taking a journey across the pond with a discussion on European Patent Practice. 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. 

Even in a globalized economy, 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.
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Guest Host: Dr. Will Doherty

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

Beyond being a great teacher with a sharp sense of classic British humor, Will is an experienced Chartered British Patent Attorney, European Patent Attorney, and IP Litigator. As a Patents Director at Albright, he prepares, files, and prosecutes patents with great success in a wide range of technical sectors globally, in addition to handling patent infringement matters. Will is a member of and regulated by IPReg, the independent professional regulatory body in the UK for Patent and Trademark Attorneys. He is also a long-standing member of the Chartered Institute of Patent Attorneys in the UK and the European Patent Institute. Will’s academic background is in Chemistry, with a doctorate in Physical and Theoretical Chemistry. 
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Episode Overview

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.

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Mossoff Minute: UK Price Controls

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. 

How to Listen

​Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
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Resources

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 US, require inventors to receive special permission to file with patent offices outside of the inventor’s – or invention’s – country.

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.