Manual how to get a European Patent

Grant proceedings before the European Patent Office

Effect of European Patent

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.

Member states of the European Patent Organisation (Contracting states

The following states are the current members of the European Patent Organisation.

 

Country  Code Member state The date of accession
 AL  Albania 1 May 2010
 AT  Austria 1 May 1979
 BE  Belgium 7 October 1977
 BG  Bulgaria  1 July 2002
 CH  Switzerland  7 October 1977
 CY  Cyprus  1 April 1998
 CZ  Czech Respublic  1 July 2002
 DE  Germany  7 October 1977
 DK  Denmark  1 January 1990
 EE  Estonia  1 July 2002
 ES  Spain  1 October 1986
 FI  Finland  1 March 1996
 FR  France  7 October 1977
 GB  United Kingdom  7 October 1977
 GR  Greece  1 October 1986
 HR  Croatia  1 January 2008
 HU  Hungary  1 January 2003
 IE  Ireland  1 August 1992
 IS  Iceland  1 November 2004
 IT  Italy  1 December 1978
 LT  Liechtenstein  1 April 1980
 LT  Lithuania  1 December 2004
 LU  Luxembourg  7 October 1977
 LV  Latvia  1 July 2005
 MC  Monaco  1 December 1991
 MK  Former Yugoslav Republic of Macedonia  1 January 2009
 MT  Malta  1 March 2007
 NL  Netherlands  7 October 1977
 NO  Norway  1 January 2008
 PL  Poland  1 March 2004
 PT  Portugal  1 January 1992
 RO  Romania  1 March 2003
 RS  Serbia  1 October 2010
 SE  Sweden  1 May 1978
 SI  Slovenia  1 December 2002
 SK  Slovakia  1 July 2002
 SM  San Marino  1 July 2009
 TR  TurkCountrey  1 November 2000
 and Extension states

tates recognising European patents upon request.

 

BA Bosnia and Herzegovina
ME  Montenegro
)

Term of the European Patent

The term of a European Patent is 20 years as from the filing date in all Contracting states. The term of a patent starts to be counted from the date of filing, but not from the priority date, which is defined in the Paris Convention.

Fees (all fees cited in the text are only EPO official fees)

The following official fees must be paid, when applying for a patent:

Each fee is payable within a certain period of time. The EPO does not send an applicant an invoice or a reminder to pay the fees in due time. Remedies are available for missed payments of some of the fees

An overview of important deadlines and official fees for filing the European Patent application can be found here:

Languages

An application can be filed at the EPO in any language. However, the official languages of the EPO are English, French and German. If the application is not filed in one of these languages, a translation in English, French or German has to be submitted within 2 months. The language in which the application is filed or translated is the language of the proceedings before the EPO.

Representation

Applicants having their residence or principal place of business in a contracting state may act on their own behalf in proceedings before the EPO. Applicants from other states have to appoint a representative, whose place of business or employment is in a contracting state, and act through him in such proceedings. The representative has to be a European patent attorney who is on a list maintained by the EPO, or a legal practitioner entitled to act before the EPO. If a representative is appointed, all notifications sent by the EPO are sent to him.

Procedures:

1. Filing a European Patent application

2.Formal examination

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 a 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 2 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 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.

3.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 the new rules (from April 1, 2010), replying to the search opinion by correcting deficiencies cited in the search report is neccessary. 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.

4. 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.

An application can also be published before the expiry of 18 months based on the applicant’s request provided that the filing fee and 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, a 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 whish to continue with their application by requesting substantive examination and paying the corresponding fee (1555 EUR). The designation fee (555 EUR) for all designation states has to be paid within the same time limit. An extension fee (102 EUR) for each extension state has to be paid if desired.

5. Substantive examination

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. Duration of the substantive examination is unspecified.

Official actions from the examiners of the EPO and answers to such official actions are possible in this stage. An applicant is given a 2- 4 month time limit to file a response to a first office action issued by an examiner. If an 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 a European patent. If not, the application will be refused.

6. Granting procedure

After the examination procedure, the EPO issues a notification of Intent to Grant for European Patent. Duration from application to grant is unspecified, very approximately it takes about 3 years.

The applicant is given a four month time limit to pay the print and granting fee (875 EUR) 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.

7. Validation and Annuity fees

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 ( three months) 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. In addition, it comprises the payment of a fee (the fee is different in each country). A European patent will only extend to those countries in which a validation is filed. The rights will lapse in any country where the validation is not filed. The European patent will remain active in any validated country as long as the annuities are paid.

The annuity fees are to be paid every year to the EPO (starting at 445 EUR) up to the granting of the application, from the second anniversary of the filing date. Thereafter, an annuity fee (the fee is different in each country) is payable annually to the national intellectual property office in which the granted European patent has been validated. If an annuity fee is not paid in due time the fee may still be paid up to 6 months late provided that a 50% surcharge is also paid.

8. Opposition

Within 9 months of the publication of the mention of the grant of a 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 (745 EUR) 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, which are usually made up of three examiners.

The opposition applies to all desingnated countries of the European patent. As with any other final decision of first-instance divisions, decisions by opposition divisions can be appealed in boards of appeal within 2 months from the date of notification of the decision.

9. 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 (500 EUR) or limitation fee 1105 EUR has been paid.

10. Appeal

An appeal may be filed by any party to the proceedings adversely affected by a decision. Appeals can be filed against decisions of 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 2 months of notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid (1240 EUR). Within 4 months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.

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