Patents of Invention

– Law of July 20, 1992, amending the patent system (as amended by: Law of May 24, 1998, Law of August 11, 2001, Law of April 18, 2004, Law of April 7, 2006, Law of April 25 2008 and Law of May 22, 2009), Grand-Ducal Decree of October 13, 1945, Grand-Ducal Regulations of November 17, 1997, on the procedure and administrative formalities and on fees, Grand-Ducal Decree of June 21, 1947, Law of May 25, 1977 (Strasbourg), Laws of May 27, 1977 (PCT and EPC), Law of October 31, 1978 (CPC).
– Laws of August 16, 1966, and July 8, 1967, on national defense.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 19, 1975.
– Strasbourg Agreement Concerning the International Patent Classification, since April 9, 1977.
– Strasbourg Convention on the unification of certain points of substantive law for inventions.
– European Patent Convention (EPC), since October 7, 1977.
– Patent Cooperation Treaty (PCT), since April 30, 1978.
– Community Patent Convention (CPC).
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since June 3, 1979.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since July 19, 2010.
– Agreement on a Unified Patent Court (UPCA), ratified on May 22, 2015.

Filing

Applicant: may be an individual or a company. If the applicant is not the inventor, a declaration of the inventorship is required.

Foreigners and nationals not residing in the country: applicants residing outside the European Economic Area must appoint a professional representative for all procedural acts except for the filing of a patent application.

Protection of foreigners: foreigners and nationals not living in the country enjoy the same protection as nationals.

Naming of inventor(s): compulsory. If the inventor wishes his name to be kept secret, a statement to this effect, signed by the inventor, must be filed.

Employee inventors: inventions belong to employer. Compensation is due where the invention is of notable benefit to the employer.

Patentability criteria: in line with Articles 52 to 57 EPC, to be patentable, an invention should be new, should involve an inventive step and be susceptible of industrial application.

Novelty: an invention shall not be considered as new if, at the effective filing date of the Luxembourg patent application, it has been made available to the public by means of a written or oral description, by use, or in any other way.

Not patentable: (1) excluded inventions: (a) inventions the publication or exploitation of which would be contrary to public order or morality and (b) inventions concerning plant or animal varieties or essentially biological processes for the production of plants or animals. This provision does not apply to microbiological processes and the products thereof; (2) are not regarded as inventions: (a) discoveries, scientific theories and mathematical methods, (b) aesthetic creations, (c) schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs, (d) presentations of information, and (e) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

Kinds of protection: twenty-year patents and six-year petty patents.

Confirmation patents: none.

Secret patents: applications and patents for inventions relating to national defense can be kept secret by Ministerial order.

Priority: multiple or partial Convention and WTO priorities, as well as priorities based on a bilateral or multilateral agreement on mutual recognition of priority rights, including internal priorities, may be claimed. Priority must be claimed within four months of the filing date.

Territory covered: the Grand Duchy of Luxembourg.

Filing requirements for an application (to be sent to agent):
(a) Information:

1. Applicant’s full name and address;
2. Inventor’s full name;
3. Title of the invention;
4. Claim of priority, stating country, filing date(s), and serial number(s) of foreign application(s), from which priority is claimed, and the name of the applicant of the priority application(s). Priority must be claimed within four months of the filing date;
5. The number of the formal drawing to be published with the abstract.
(b) Documents:

6. Description, claims and abstract, in French, German or English (if description, claims and abstract are in English, a French or German translation of the claims is required). Size: 29.7 x 21 cm (A4);
7. Drawings: formal drawings. Size: 29.7 x 21 cm (A4). The drawings should be numbered Fig. 1, Fig. 2, etc., without explanatory wording. (Schemes of process steps and diagrams are considered to be drawings.);
8. If a novelty search is to be requested (see "Granting" below), a sworn declaration about the applicant status as one of: an individual, a university, a research center, a non-profit organisation, an SME qualifying under recommendation 2003/361/CE of the European Commission (i.e. an autonomous body corporate with a number of staff of less than 250 employees, an annual turnover of less than €50m or a profit-and-loss account of less than €43m, 25% maximum of the shareholding being owned by another body corporate that is not an SME);
9. Assignment of priority right, if the Luxembourg applicant is not identical to the applicant of the priority application. No legalization required;
10. Declaration signed by the inventor, if the inventor wishes his name to be kept secret;
11. Certified copy of priority document. If the priority document is not in French, German or English, a French or German translation of the priority document may be required  if any element of the Luxembourgish specification differs from the priority case. The translation need not be sworn nor verified.

Minimum requirements for filing a patent application in Luxembourg:
In order to obtain a filing date at the Patent Office, it is necessary to file a request including at least:
1. Applicant’s full name and address;
2. 1 copy of the description and claims in French, German, or English (if description and claims are in English, a French or German translation of the claims is required);
3. 1 set of informal drawings.

Notes: all other information and documents may be filed subsequently within a maximum term of four months of the filing date, except for the translation of the claims (if required) due within one month of the filing date.

The official filing certificate is issued by the Patent Office only after all the necessary documents and information have been supplied to the Patent Office.

Electronic filing: available. 

Electronic signatures: are accepted, but must be of the verified/encrypted type e.g. DocuSign, LuxTrust and the like.

For a change of name or address:
1. Simple copy of document recording the change. No notarization or legalization required.

For a change of ownership:
1. Simple copy of document/instrument/deed recording the transfer, with the official number(s) of the/each transferred patent appearing in the document (or in a schedule or annex thereof). No notarization or legalization required.

Note: no translation required if the documentary evidence is in English, French or German.

PCT applications designating the EPO:
Luxembourg is still a designated Office under the PCT system, but continues to observe the 20-month time limit for entry into the national phase according to Chapter I. PCT applicants wishing to defer entry into the national phase in Luxembourg should designate the European Patent Office, and validate the European patent in Luxembourg after completion of the European procedure. The time limit for entering the EP regional phase under both Chapters I and II is 31 months.

European patent validation requirements: no translation of the granted European patent is requested by the national Office under Article 65 EPC. Provisional protection (optional) however, requires the filing of a French or German translation of the claims of the European patent application, if the application was filed in English.

Examination Procedure

Amendment of application: possible, once prior to filing the request for the novelty search and once either within four months of the issue of the novelty search report or when filing a novelty search report issued on a priority-sharing application. 

Process and product claims: allowable.

Prior user: “Possession personnelle” and right of prior use provided for.

Disputes about ownership: an action can be brought only before the civil court (Tribunal d'arrondissement de Luxembourg).

Dispute about novelty: only the civil court is competent in this regard (action for cancellation).

Examination: examination only as to form of documents required and information.

Division: divisional applications may be filed before filing a request for a novelty search and after the issue of the novelty search report but imperatively before grant.

Appeals: following refusal of an application, an appeal may be filed with the Minister for Economy and a further appeal may be filed with the Committee for Contentious Matters of the Council of State.

Opposition to application filed: no opposition procedure. However, third parties may file observations which are placed into the file and communicated to applicant.

Provisional registration: not provided for.

Registration: the patent is registered on the date of grant.

Corrections: not possible, except for the correction of errors of a clerical nature before grant of patent.

Publication: Luxembourg patent applications and patents are not published as such. From either the date of publication of the application or the date of grant of the patent, whichever occurs first, the official files are open to public inspection, and photocopies can be obtained from the Patent Office, or consulted online on the "BPP eRegister" resource (https://patent.public.lu/fo-eregister-view/search). (A numerical collection of Luxembourg patents is available to the public at the European Patent Office). The text of the granted patents is also made available to the public on CD-ROM in the ESPACE-BENELUX series issued by the European Patent Office. The following particulars only are published in the Mémorial (the official journal of the Grand Duchy of Luxembourg): patent number, filing date, patentee, title of invention, inventor, priority(ies) claimed, date of grant, assignment of patent and international classification.

Granting, Protection

Grant of patent: if applicant provides a novelty search report or requests the drawing up of such a report within eighteen months from the priority date, the patent is granted four months after the issue or the filing of the novelty search report. If applicant does not comply with this formality within eighteen months from the priority date, a petty patent with a duration of six years is granted promptly after the publication of the application.

Delivery of document: the Letters Patent is issued in paper format only.

Beginning of protection: on the date of grant.

Duration – extension: twenty years from the filing date (extension of up to five years possible; see SPCs below, respectively six years from the filing date). 

Paediatric extension: possible.

Annuities – latest term for payment – extension: annuities are due annually from the third year, on the last day of the anniversary month of the filing date; the law provides for an extension of six months with fine.

Marking of patented goods: not compulsory.

Usual marking: “patented” or “breveté” with the patent number.

Amendment of issued patents: not possible.

Revocation: possible by court decision for (1) lack of patentability; (2) applicant not entitled to patent; (3) insufficient disclosure; (4) the object of the patent extends beyond the content of the application; or (5) the protection conferred by the patent has been extended.

Assignment: may be recorded at any time at the Patent Office.

Licenses: license agreements can be entered into the official Register.

Working: if at the expiry of a period of four years from the filing date of the application, or of three years from the date of grant of the patent, the owner of a Luxembourg patent has not sufficiently worked the patented invention in the Grand Duchy of Luxembourg or in a State party to the Agreement establishing the WTO, a third party may obtain a compulsory license by Grand-Ducal Decree.

Restoration of patent: possible by ministerial decree if the patent has lapsed through failure to pay a renewal fee, for reasons independent of the owner, without prejudice to user rights obtained by third parties in the meantime. A corresponding request must be filed within twenty months from the due date of the missed renewal.

Protection conferred: (1) direct exploitation: right to prohibit the manufacture, the offer, the marketing, the use, the import of the products and processes covered by the invention, including the products directly obtained by the processes of the invention; (2) contributory infringement: right to prohibit supplying or offering to supply means for implementing the invention.

Modification of Protection after Grant

Right of prior user: any action against the validity of a granted patent must be brought before the civil courts. Such an action may be filed at any time during the lifetime of the patent.

Opposition to granted patents: must be filed in the form of a request for revocation.

Licenses of right: available upon corresponding declaration filed by the owner (resulting in a reduction in renewal fees).

Ex officio licenses: available upon corresponding action taken by Grand-Ducal Decree.

Compulsory licenses: see under “Working”, above; also available upon request for dependent patents.

Revocation: possible by court decision at any time.

Restoration: possible by ministerial decree.

Infringement: action for infringement before the civil court possible at any time. Statute of limitation for damages: three years.

Supplementary Protection Certificates (SPCS)

For Medicinal Products and Products for Pediatric Use:
– EEC Council Regulation No. 469/2009 of May 6, 2009.
For Phytopharmaceutical Products:

– EEC Council Regulation No. 1610/96 of July 23, 1996.

Content of the application:
(a) the name and address of the applicant;
(b) the name and address of the professional representative, if applicable;
(c) the number of the basic patent and the title of the invention;
(d) the date of filing and the date of grant of the basic patent;
(e) the date and number of the first authorization to place the product onto the Luxembourg market;
(f) the date and number of the first authorization in the European Union or a copy of the notice of publication of the aforementioned authorization (only in the case where this authorization is not the same as the first Luxembourg authorization);
(g) the name of the product appearing on the copy of the first Luxembourg authorization, and, if applicable, on the copy of the aforementioned notice of publication;
(h) an indication of the legal provision under which the authorization subject of the aforementioned notice of publication took place (only in the case where this authorization is not the same as the first Luxembourg authorization).