There are four basic requirements for patentability under the European Patent Convention (EPC): 1) there must be an “invention”; 2) the invention must be “susceptible of industrial application”; 3) the invention must be “new”; and 4) the invention must involve an “inventive step” (Article 52).

Many people who have confidence in their knowledge of U.S. patent law run into problems when applying for European patents because they disclose their invention before filing either a U.S. or European patent application. While this may be acceptable (with certain limitations) in the U.S., it can create insurmountable problems in many other countries.

In order to understand why, you must understand the third requirement of patentability under the EPC - the “new” requirement.

According to Article 54(1) of the EPC, an invention is considered to be new if it does not form part of the state of the art. Article 54(2) goes on to define “state of the art” as everything made available to the public, whether written, oral, in use, or any other way before the date of filing of the European patent application.

So, any public disclosure before the filing date of your invention, including writing about your invention on your blog, or using your invention as part of your newly launched website, can result in loss of international patent rights. The only situations where public disclosure is not taken into consideration is if the public disclosure was made within six months of the filing of the European patent application, and was the result of some sort of abuse, such as a breach of confidence, or if it was made at a recognized international exhibition (Article 55).

Since the EPO only searches printed publications during examination, an oral disclosure is unlikely to affect the grant of a patent. However, the oral disclosure could be used by others after grant, for example, during an EPO opposition proceeding or national revocation proceeding.

Therefore, those considering filing international patent applications should be extremely careful about any public disclosure and, preferably, seek the advice of qualified patent counsel.

Links: European Patent Convention, Article 54, Article 55, Guidelines for Examination in the European Patent Office (Patentability: General, Non-prejudicial disclosures; Guidelines for opposition procedure), EPC Part V - Opposition Procedure.