The European Patent Convention (EPC) enables the applicant to obtain a patent for several countries on the basis of a single application in a single procedure before the European Patent Office (EPO). After the European patent is granted by the EPO, it is validated in the selected individual countries.
The European Patent Convention (EPC) enables an applicant to obtain a patent for several countries on the basis of a single application via a single, harmonized procedure before the European Patent Office. The main idea of a European patent is the availability of patent protection in 40 countries (38 Contracting states to the EPC and 2 extension states), when filing only one patent application to the European Patent Office (EPO) in one of the official languages (English, German or French). In each Contracting state, the proprietor of the European patent gains the same rights as he would with a national patent. The European patent is an easier and a less expensive way to obtain patent protection for an invention if an applicant is opting for protection in at least four European countries.
Having a great experience in filing and managing European patent applications, we can represent clients before the EPO. We can offer our clients a complete spectrum of European patent related services:
- filing European patent applications to the EPO and represent the client’s interests during the entire pending period including the prior art searches, amendments in description and claims, and recording of amendments;
- evaluating European search reports with written opinions and prepare responses to them;
- communicating with the EPO experts during examination procedure; preparing the replies to the official actions;
- preparing and file a translation of the claims into French and German (if the application was originally filed in English) and pay the print and grant fees to the EPO. We monitor the terms of European Patent validation in all the applicant’s selected countries;
- validating European Patent in all EPC states;
- handling annuity fees due in all EPC states, monitoring the due dates and making payments on time. We send reminders to clients approximately three months before the due date.
An efficient way to protect a patent in some or all of the 38 Contracting States of the European Patent Convention (EPC) is to file a European patent application. In this way the registration of the European patent undergoes a single and harmonized procedure before the EPO.
We provide a full range of services in preparing and filing of the European patent applications, representing applicants during the examination and grant procedures before the EPO, validating the European patent in designated countries and maintaining the European patent in each country where a request for the validation is filed.
Filing of European patent application
European patent applications can be filed in any language. However, if filed in a language other than an official language of the EPO (English, French or German), a translation into English, French or German must be filed within two months of the date of filing.
The EPC includes a number of non-European Union members such as Switzerland, Norway and Turkey. The Contracting States (or countries) in which the patent protection can be sought must be designated on filing, together with any extension states required. There are currently only two extension states, including Bosnia and Herzegovina, and Montenegro.
The European patent application may be filed as a first application or as a so-called convention filing, where the priority, that is the filing date of a previous patent application, is claimed. It is possible to claim the priority from an earlier-filed patent application up to 12 months from the first filing, and this can be an effective way to secure the patent protection.
The requirements for obtaining a filing date include:
- a description of the invention or a reference to an earlier-filed patent application;
- an indication that a patent is sought;
- contact information of applicant or its representative.
Our professionals can assist you in best meeting these requirements using a secure, online filing platform. We are able to offer our clients a cost-effective way to file all required documents and to provide a timely and high quality translation in order to meet any required deadlines.
A formal examination involves checking whether all the necessary information and documentation has been provided, so that the application can be accorded a filing date. The following are required: an indication that the European patent is sought; particulars identifying the applicant; a description or a reference to a previously filed application. If no claims are filed, they need to be filed within two months. This is followed by a formal examination relating to certain formal aspects of the application, including the form and content of the patent application, the translation, the designation of the inventor, the appointment of a professional representative and the payment of fees due.
The duration of the formal examination is not indicated, however, depending on the deficiencies, it is accomplished in 1-3 months.
The date of filing of a European patent application shall be the date on which the requirements laid down in the Implementing Regulations are fulfilled. An application which passes the examination as to formal requirements is ready for publication.
European search report
The European search report is based on the patent claims, but also takes into account the description and any drawings.
The European search report is usually issued in about 6-9 months after filing and sent to the applicant, together with a copy of any cited documents and an initial opinion on whether the claimed invention and the application meet the requirements of the EPC.
This opinion is not published, but becomes available to the public after the application has been published.
Under Rule 70a EPC, replying to the search opinion by correcting deficiencies cited in the search report is mandatory. Such a response must be provided within 6 months from the publication of the search report. If an applicant fails to respond, then a application will be deemed withdrawn.
Our experts may assist you in evaluating the European search reports with written opinions and preparing and filing the responses to the Official Actions.
Publication of the application
The European patent application in the language of the proceedings is published 18 months after the date of filing or the earliest priority date.
The application can also be published before the expiry of 18 months based on the applicant’s request provided that the filing fee and the search fee have been paid.
Once the European patent application has been published, the public has access to its bibliographic data and information about the state of proceedings via the European Patent Register.
From the date of publication, the European patent application confers provisional protection of the invention in the states designated in the application as published.
The application is not published if it has been finally refused or deemed withdrawn before the termination of the technical preparations for publication.
Within six months from the date when the publication of the search report was mentioned applicants have to decide whether they wish to continue with their application by requesting the substantive examination and paying the corresponding fee. The designation fee for all designation states has to be paid within the same time limit. The extension fee for each extension state has to be paid if desired.
After the request for examination has been made, the EPO examines, in the light of the search report and the applicants’ reply to it, whether the European patent application and the invention to which it relates meet the requirements of the EPC and, in particular, whether the invention is patentable. Official actions from the examiners of the EPO and answers to these official actions are possible in this stage. The applicant is given a 2- 4 month time limit to file a response to the first office action issued by an examiner. If the applicant fails to answer in due time, the application is deemed to be withdrawn.
After applicant’s reply, in cases of any objections, the examiner may issue a further official action, contact the applicant (or his representative) by telephone, invite the applicant (or his representative) to an interview or invite to oral proceedings.
If the examining division considers that the application meets the requirements of the EPC, division’s decision will result in granting the European patent. If not, the application will be refused.
We may assist you in communicating with the EPO experts during the examination procedure; preparing the replies and argumentations to the official actions.
After the examination procedure, the EPO issues a notification to grant the European patent. The applicant is given a four month period to pay the printing and granting fee and to file a translation of the claims into French and German (if the application was originally filed in English) to the EPO. Shortly thereafter, the EPO issues the Decision to Grant and publishes it in the European Patent Bulletin. The granted European patent has to be validated in the selected countries within 3 months, after the grant has been published.
Our professional team prepares and files a translation of the claims into French and German (if the application was originally filed in English) and pays the printing and granting fees to the EPO. We monitor the terms of the European patent validation in all the applicant’s selected countries.
Once the mention of the grant is published, the patent has to be validated in each of the designated countries within a specific time limit in order to retain its protective rights and become enforceable against infringers. This validation step consists of either the filing with national patent office of the translated claims or translation of full specification into an official language of that state with national patent office. European patent will only extend to those countries in which a request for the validation is filed and validation fee has been paid. The European patent is valid as long as the annuity fee in each country is paid.
We are able to validate the granted European patent in all the EPC member states, including the extension states. Upon instructions, we will prepare all the patent validation translations and attend to the patent filing in the required countries. We monitor validation deadlines and forward official receipts to you when they are received.
Maintaining the granted European patents
The annuity fees are to be paid every year to the EPO up to the granting of the application starting for the third year. After the validation, the annuity fees must be paid annually in each country where the granted European patent has been validated. The annual fee increased by 50% may still be validly paid within six months from the due date. If the maintenance fee is not paid by the due date, the patent is deemed abandoned.
Our professionals handling annuity fees before the EPO and in all the EPC states monitor the due dates and make payments on time until clients notify us otherwise.
Representation of client’s interests in disputes regarding patent legal protection
Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin any person (except the proprietor of the patent) may give notice to the EPO of opposition to that patent.
Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.
Opposition may only be filed on the grounds that:
- the patent’s subject-matter is not patentable;
- the patent does not disclose the invention clearly and completely enough for it to be carried out by a person skilled in the art;
- the patent’s subject-matter extends beyond the content of the application as filed.
The examination of oppositions is handled by the EPO’s opposition divisions. The opposition applies to all the designated countries of the European patent.
Revocation or limitation
The patent proprietor may request limitation or revocation of the patent at any time after it has been granted. It shall not be deemed to have been filed until the revocation or limitation fee has been paid.
An appeal may be filed by any party to the proceedings adversely affected by a decision. Appeals can be filed against any decisions made by the Receiving Section, the Examining divisions, the Opposition Division and the Legal Division.
Notice of appeal shall be filed in accordance with the Implementing Regulations to the Boards of Appeal within two months of notification of the decision. Notice of appeal shall not be deemed filed until the fee for appeal has been paid. Within four months of notification of the decision a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.
We can build your opposition case within the time limits following the grant of your competitor’s European patent. We can also represent you during the initial written stage of oppositions and appeals as well as during any possible oral proceedings held at the EPO.