Territorial Nature of Patent Protection

Territorial Nature of Patent Protection

At the EPO:
Contracting States
According to Art.2(2) EPC, “[t]he European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.” Hence, subject to certain conditions and requirements, a granted European patent is equivalent to a national patent in each of the Contracting States of the EPC1 [hereinafter referred to as “Contracting States”]. There is one grant of a European patent but once granted it becomes individual European patents for each Contracting State. However, such individual European patents can be subject to an Opposition procedure before the EPC.
Extension States
Furthermore, it is possible to extend European patent applications and thus patents to certain states that concluded an Extension Agreement with the EPO. All Extension Agreements were signed with European states2 with the understanding that these States will eventually accede to the EPC. Currently [June 2015] there are two Extension Agreements in force, one with Bosnia and Herzegovina and the other one with Montenegro. Extension agreements were in force with other countries (Slovenia, Lithuania, Latvia, Romania, Croatia, Albania, The former Yugoslav Republic of Macedonia, Serbia) but were terminated when these states acceded to the EPC. This certainly will be also the case with the two current “Extension” States” Bosnia and Herzegovina and Montenegro. With the exception of the two “Extension States”, former non-baltic Soviet Republics, Andorra, and the Holy See (Vatican), all European states are Contracting States to the EPC.
Validation States
A recent development is patent validation agreements. Currently there are two ratified patent validation agreements: The validation agreements with Morocco entered into force on 1. March 2015, and the validation agreements with Moldova entered into force on 1. November 2015. A validation agreement signed with with Tunisia still awaits ratification.2 Under the validation agreements it will be possible, “to validate” European patents and applications for those States, European patents and applications will have the same legal effect as national applications and patents, and will be subject only to national patent legislation. It will have to be seen whether is only the first of more of such agreements.

At the USPTO:
U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions.[35 USC § 100(c)] and are only granted by the USPTO.[A North American Patent Office (NAPO) apparently was under discussion/consideration during the NAFTA negotiations.]

Notes & Comments:
1. All of which are European States and all member states of the European Union are Contracting States to the EPC. All Contracting states are automatically designated in the European patent application
– possible effect and consideration of a granted patent through the Patent Prosecution Highway is not discussed.
– the International Preliminary Report on Patentability is a preliminary and non-binding report established for an International (PCT) application whether or not an application satisfies the patentability requirements applicable during the International Phase. A more final and binding “certificate of patentability” was discussed at WIPO but not introduced. Ever closer co-operation between patent offices is likely, but a “World patent” is still far away in the future and for various political and technical questions probably ever will so.
x. List and status of “Contracting States” can be found here https://goo.gl/FwR5gj
x. List and status of “Extension states” can be found here, https://goo.gl/VYcFUz
2. List and status of “Validation states” can be found here https://goo.gl/l0g9p0.