Patents: what you need to know

The European patent application procedure

This is an outline of the European patent application procedure which is intended as a short introduction for those who are new to the process. There are a great many other features, options and rules which are not described.

A European patent application is a single patent application which can currently give rise to rights in the thirty eight Member States of the European Patent Organisation as well as two non-member Extension States and, through validation agreements, in two Validation states.

Although a European patent application is processed as a single application until grant, successful applicants ultimately obtain a bundle of separate patents in individual states. Note that the proposed EU unitary patent will be obtained through the existing European patent application procedure, as set out below, if and when it comes into effect.

Note also that the European Patent Convention is separate to (and in fact predates) the European Union. Accordingly, the procedure will not affected by Brexit. We have a separate article with our comments on the implications of Brexit on patents.

Filing a new European Patent Application

The European patent application procedure is administered by the European Patent Office. A European patent application is filed with the European Patent Office and includes an application form and a patent specification. A complete patent specification includes a description of the invention, drawings, claims (which set out the scope of protection sought) and an abstract.

Provided that various quite stringent legal requirements are met, a European patent application may claim priority from one or more earlier patent applications filed in the preceding year. For example, it is common for UK based applicants to file a UK patent application in the first instance and then to file a European patent application, within one year, with a claim for priority from the first application.

Search

Several months after the application has been filed, a search report should issue which lists the documents which an examiner at the European Patent Office considers to be relevant to the patentability of the claimed invention. The search report is issued with an examiner’s opinion on the patentability of the invention.

Designation of inventor

Within sixteen months of filing the application, of the filing date of the earlier application from which priority is claimed (if applicable), it is necessary to file a Designation of inventor form. The Designation of inventor form gives the name and correspondence addresses of the inventors and sets out in brief terms how the applicant(s) derive title in the invention from the inventor(s). For example, it may be that an applicant is a company which employs some or all of the inventors.

Publication

In due course a European patent application is published. Unless early publication is request, this takes place no earlier than eighteen months from the filing date (or either months from the earliest priority date, if priority is claimed).

If the search report is already available, the application is published with the search report (an “A1” publication). Otherwise, the application is published without the search report (an “A2” publication) and then the search report is later published when available (an “A3” publication).

Requesting Examination and Paying Designation Fees

In order to proceed with the European application it is necessary to request examination and pay the examination fee by a deadline of 6 months from the publication of the search report. This is typically about two years from the date of filing (or the earliest priority date, if priority is claimed).

At the same time it is usually necessary to file a written statement commenting on the objections raised in the opinion accompanying the European search report, and it is common to amend the description and/or claims at this time.

Furthermore, it is necessary by the same deadline to pay the so-called designation fee, and also to pay extension and/or validation fees if it is desired to extend the scope of protection to any of the so-called extension and/or validation states.

Prosecution

Once examination has been requested, there is usually a delay of six months to several years before a first examination report issues. Some applications are simply accepted in which case there is no further charge for prosecution. However, it is more usual to receive one or more examination reports. Examination reports set out objections to the application and have a response deadline. Common objections include that the claims cover subject matter which is not novel or which does not have an inventive step although there are quite a number of other grounds on which objections may be raised.

Responses to examination reports set out reasoned arguments against the objections that have been raised and make amendments to the claims where appropriate. Sometimes several examination reports will be issued.

If the Examining Division are not minded to accept the application the application will in due course be refused. It is common practice to request an opportunity to have an oral hearing before refusal takes place. If a case is refused, it is possible to file an appeal.

Renewal fees

It is necessary to pay renewal fees annually during the European patent application procedure, from the end of the month in which the second anniversary of the filing date of the application falls. The renewal fees increase annually up to the 10th year and are constant thereafter.

Grant

Provided that the European Patent Office accepts the application, they issue a “Decision to grant” letter and issue a “Drückexemplar”, which is a proof copy of the text approved for grant.

It is possible to disapprove the text for grant and/or to make changes to bibliographic information but usually applicants will approve the text for grant and meet the other formal requirements which are to pay the grant and publication fees and file translations of the claims into French and German.

If an applicant wishes to file a divisional application they should plan to do so by this time. Once a European patent is granted it is no longer possible to file a divisional application from that application.

Validation and Submission of Translations

Once the patent has been granted there is then a three month period during which it is necessary to validate the patent in individual European countries where protection is sought. The process of validation varies between countries, depending on the formal and translation requirements of each country.

Formal requirements vary from territories such as the UK, France, Germany and Ireland where it is necessary only to name an address for service, through to countries such as Spain, Italy and Poland, who validation requirements including the filing of a translation of the entire patent. Some other countries require the claims of the patent to be translated (in some cases provided that the European patent was prosecuted in English).

Note that there are advanced proposals to introduce an EU Unitary Patent. If and when these proposals come into force, this will provide a new option for obtaining patent protection in a number of EU countries. The option of a Unitary Patent is expected to be available for any European patent application granted after the proposals come fully into force.

Opposition Period

Once the European Patent Office Official Journal has published a mention of grant of a European patent, there is a nine month period during which third parties may oppose the patent. Opposition proceedings follow a written procedure and typically terminate in an oral hearing. The final opposition decision is open to appeal.

Renewal Fees

Once a European Patent has been granted, it is necessary to pay renewal fees annually in respect of each territory where the patent remains in effect, to keep the patent in force for up to its maximum duration of 20 years from the filing date. Depending on the date of grant it is sometimes necessary to pay national renewal fees before validation procedures are complete.

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