Filing and Obtaining a European Patent
Applicant: any natural or legal person; joint applicants possible, also two or more applicants designating different Contracting States.
Applicant not residing in Contracting States: must be represented by a professional representative in all proceedings, other than in filing the European patent application.
Where to file: European patent application may be filed (a) at the European Patent Office at Munich, its branch at The Hague, or its sub-office at Berlin; or (b) if the law of a Contracting State so permits or prescribes, at the central Industrial Property Office of that State.
Official languages: a European patent application can be filed in one of the official languages (English, French and German) or in any other language. A translation in one of the three official languages of the EPO must be filed within two months of the filing of the application.
Designation of the Contracting States where protection is sought: all States are automatically designated when filing. One designation fee for designating all States (effective since 2009).
Designation of the inventor(s): is compulsory (within sixteen months of the date of filing of the application or, if priority is claimed, of the date of priority). Renouncement possible.
Patentability: any inventions which are susceptible to industrial application, which are new and which involve an inventive step.
Novelty: an invention will be considered to be new if it does not form part of the state of the art. The definition of the state of the art in the Convention corresponds to absolute novelty, i.e. the state of the art is held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing (priority date). It also includes European patent applications whose filing dates are before that date, but which were published on or after that date. An earlier disclosure is non-prejudicial only if it occurred no earlier than six months preceding the filing of the European patent application and was due to an evident abuse in relation to the applicant or was displayed at an officially recognized international exhibition.
Inventive step: if the invention, having regard to the state of the art, is not obvious to a person skilled in the art.
Exceptions to protection: among others: methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body shall not be regarded as inventions, however, products such as substances or compositions for use in these methods are patentable (“first medical use”). If the known substance or composition was previously disclosed for use in surgery, therapy or diagnostic methods practiced on the human or animal body it can be patented as “second or further medical use”.
Priorities: multiple and partial priorities may be claimed, within sixteen months from the earliest priority date claimed, based on an application(s) filed in a state party to the Paris Convention or in any member of the World Trade Organization.
Classification: applications and patents are classified according to the International Patent Classification (IPC). Since January 2013, a new classification system, an extension of the IPC, is jointly managed by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). The EPO and the USPTO launched the Cooperative Patent Classification scheme (CPC), a global classification system for patent documents, only available in English (at: www.cooperativepatentclassification.org/cpcSchemeAndDefinitions/table.html). The system is the result of a partnership between the EPO and the USPTO in their joint effort to develop a common, internationally compatible classification system for technical documents, in particular, patent publications, which will be used by both Offices in the patent granting process. The CPC is an ambitious harmonization product that incorporates the best classification practices of both Offices. It has a similar structure to the International Patent Classification administered by WIPO, more detailed than the IPC to improve patent searching. It is divided into nine sections, A-H and an additional section Y related to general tagging of new technological developments, which in turn are subdivided into classes, subclasses, groups and subgroups. Including approximately 250,000 symbols initially based on the European Classification system (ECLA) and incorporating the best classification practices of both Offices, the CPC now enables examiners and patent users worldwide to conduct patent searches by accessing the same classified patent document collections. This will not only lead to more efficient prior art searches, it will also enhance efficiency through work-sharing initiatives aimed at reducing unnecessary duplication of work.
Applications relating to biological material: if the invention involves the case of or concerns biological material which is not available to the public, the applicant must deposit a sample of the biological material with a depositary institution recognized by the EPO not later than the date of filing the application. The depositary institutions which are recognized by the EPO are periodically published by the Official Journal of the EPO.
The applicant must indicate the depositary institution which he has chosen, together with the accession number of the deposited biological material within a period of sixteen months after the priority date. The application as filed must give such relevant information as is available to the applicant on the characteristics of the biological material.
Filing requirements for an application:
1. Request for grant of a European Patent, signed by the applicant(s) or the representative(s), not legalized;
2. Designation of inventor signed by the applicant(s) or the representative(s);
3. Specification in English, French or German or in any other language, 1 copy on A4 paper (size: 29.7 cm x 21 cm), minimum margins: top of the sheets: 2 cm, left side: 2.5 cm, right side: 2 cm, bottom: 2 cm, all sheets numbered consecutively at the top, but not in the top margin. Typing should be 11/2 spaced in characters, the capitals of which are not less than 0.21 cm high;
4. Drawings: 1 copy on white paper, size A4, usable surface area not exceeding 26.2 cm x 17 cm;
5. Abstract, not more than 150 words, 1 copy;
6. Priority document, if necessary with a translation in English, French or German;
7. Information on prior art.
Filing requirements necessary for securing a filing date:
1. An indication that a European patent is sought;
2. Information identifying the applicant or allowing the applicant to be contacted;
3. A description or reference to a previously filed application.
Filing requirements which may be met later (usually subject to a notification):
– Payment of fees for filing, search, and claims in excess of 15: within one month of filing date;
– Payment of the designation fee: within six months from the date on which the European Patent Bulletin mentions the publication of the European search report;
– (If required) indication of the depositary institution and the accession number of the deposited biological material: within a period of sixteen months after the priority date;
– (If required) translation of application into an EPO language: within two months of filing;
– (If required) certificate of exhibition: within four months of filing the European application;
– Designation of inventor: within sixteen months of filing or priority date;
– File number of priority application and priority document: within sixteen months of priority date;
– (If required) translation of priority document into an EPO language: time limit to be set by the EPO;
– (If required) copy of the search results of any search carried out by the authority with which the previous application was filed.
Amendments to the application: (1) before receiving the European search report the applicant may not amend the specification or drawings of the application, unless it is to remove errors revealed by the formalities examination (for example linguistic errors, or errors of transcription); (2) after receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the specification and drawings. Amendments made in this period will be mainly in response to the outcome of the search. According to Rule 161 (effective since 2010) it will be mandatory to address the objections raised in the written opinion issued by the EPO. The applicant will be invited to comply on the search state with the requirement of Rule 43 EPC, the EPO search will be focused on only one independent claim per category; (3) after receipt of the first communication from the Examining Division, the applicant can amend the specification and drawings only once more of his own volition provided that the amendment is filed at the same time as the reply to the communication. Further amendment can be made if the Examining Division gives its consent; (4) under no circumstances can the application be amended in such a way that it contains subject matter which extends beyond the content of the application as filed.
Formalities examination: formal deficiencies may be corrected upon notice from the EPO. Deficiencies which can be corrected under certain circumstances: those affecting a claim to priority or the designation of Contracting States; or deficiencies caused by late filed or missing parts of the specification or drawings.
Search: a mandatory search report is established and transmitted to the applicant. The search report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the EPC, unless a communication under Rule 71(1) and (3), can be issued.
Publication: the application will be published after the expiry of a period of eighteen months from the date of filing or from the earliest date of priority. It may be published earlier on request. The search report will be published with the application or separately if not available at that time. If the applicant files amended claims before the termination of the technical preparations for publication, they will be published in addition to the original claims.
Substantive examination: a request for examination has to be filed by the applicant up to the end of six months after the date on which the European Patent Bulletin mentions the publication of the European search report; otherwise the application will be deemed to be withdrawn. Based on the request for examination, a substantive examination is carried out. If the application does not meet the conditions for grant, the applicant will be invited in reasoned reports to file his observations and when appropriate, to amend the specification and the drawings. Finally the Examining Division will either refuse the application or grant a European patent. In the latter case, the Examining Division informs the applicant of the text in which it intends to grant it, and invites him to pay the fees for grant and printing and to file a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings. If the applicant pays the fees and files the translation, he shall be deemed to have approved the text intended for grant.
Division: from April 1, 2014 the applicant may file a divisional application relating to any earlier European patent application.
Opposition: within nine months from the publication of the granting decision, any person (except the patent owner) may give notice to the EPO of opposition to the patent granted. Opposition can only be filed on the grounds that: (1) the subject matter of the patent is not patentable within the terms of Articles 52 to 57 EPC 2000 (“Patentable inventions, Exceptions to patentability, Novelty, Non-prejudicial disclosures, Inventive step, Industrial application”); (2) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (3) the subject matter of the European patent extends beyond the content of the application as filed. If the Opposition Division concludes that the grounds for opposition prejudice the maintenance of the European patent, it will revoke the patent. If not, it will reject the opposition. If the proprietor of the patent makes amendments during the opposition proceedings in the light of the grounds for opposition and if the Opposition Division concludes that the patent so amended meets the requirements of the Convention, it will decide to maintain the patent as amended provided the proprietor of the patent approves the new text, pays the printing fee for the new specification in time, and files a translation of any amended claims in the other two official languages of the EPO.
Appeals: appeals can be filed against decisions of the Receiving Section, the Examining Divisions, the Legal Division and the Opposition Divisions. It shall have suspensive effect. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless separate appeal is allowed in the decision. Decisions regarding appeals will be taken by the Boards of Appeal in Munich. Members of the Boards may not belong to the Receiving Section, the Examining Divisions or the Opposition Divisions. In order to ensure uniform application of the law, or if an important point of law arises, either the Board of Appeal (of its own motion or following a request from a party to the appeal) or the President of the EPO, shall refer to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.
Renewal fees: renewal fees must be paid to the EPO for European patent applications. These fees are due for the third year and each subsequent year on the last day of the month containing the anniversary of the filing date. Anyone can validly make the payment within six months following the due date provided that an additional fee is paid within the same period. If the renewal fee and any additional fee have not been paid, the application will be deemed to be withdrawn. The last renewal fee payable for a European patent application will be that for the year in which the mention of the grant of the patent is published.
Loss of rights due to failure to observe time limits: in cases in which a loss of rights occurs without the EPO taking a decision, the EPO will notify the applicant of the loss of rights. If the applicant considers that the loss of rights is unjustified, he can, within two months after receipt of the notification, apply for a decision. Such a decision will be given only if the EPO adheres to its opinion. The decision can be appealed.
Completion of an omitted act: depending on the type of time limit which has not been observed, the omitted act may be completed using two means of redress: (1) further processing of the application: further processing of the European patent application can be requested if an applicant fails to observe a time limit vis-à-vis the European Patent Office by payment of the prescribed fee within two months of the communication concerning either the failure to observe a time limit or a loss of rights. The omitted act shall be completed within the period for making the request; (2) re-establishment: an application for re-establishment of rights can be filed if the applicant (or proprietor) who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office. (For several important situations, this possibility is however explicitly excluded.) The application must be filed in writing within two months from the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application will only be admissible within the year immediately following the expiry of the unobserved time limit. The application must state the grounds on which it is based, must set out the facts on which it relies, and the fee for re-establishment of rights must be paid.
Language: all documents are ultimately required in an official EPO language, i.e. English, French or German. They may, however, initially be filed in an official language of a Contracting State if the applicant is either a national or a resident thereof. A translation into one of the official EPO languages has to be filed within one month of the filing of the document. (For conditions of filing the patent application, see above.) A reduction of the fees shall be allowed.
Effects of the European Patent
Duration: twenty years from the date of filing.
Effects: a granted European patent shall confer in each Contracting State for which it is granted the same rights as would be conferred by a national patent.
Patented process: the protection conferred by a process patent shall extend to the products directly obtained by such process.
Extent of protection: shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
Translation of the specification of the granted European patent: see below under “5. The National Phase”.
Assignment – licensing: a European patent application may be assigned or licensed in whole or in part for the whole or part of the designated Contracting States. Registration of assignment can still be recorded for patent during the nine-month opposition period or during opposition proceedings.
Limitation or revocation: at the request of the proprietor, the European patent may be revoked or limited by an amendment of the claims. The request must be filed with the European Patent Office and the limitation or revocation fee must be paid. Revocation is as well possible under the law of a Contracting State with effect for its territory on the grounds: (a) subject matter is not patentable within the Articles 52-57; (b) the invention is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) the subject matter extends beyond the content of the application as filed; (d) the protection has been extended; (e) the proprietor is not entitled.
Renewal fees: obligation to pay renewal fees to the EPO terminates with the payment of the renewal fee due for the year in which the mention of the grant of the patent is published. Afterwards, the fees have to be paid separately in each designated Contracting State according to the national patent laws.
Conversion into a national patent application: at the request of the applicant, a European patent application can be transformed into a national patent application if (a) in the case of filing at a national Office, the European patent application did not reach the EPO within fourteen months after filing or after the priority date; (b) in special cases, according to national laws. The request for conversion is to be filed for (a) at the corresponding national Office, for (b) at the EPO within three months after the date of notification.
The National Phase
Translations of the patent specification: all Contracting States have enacted provisions, that if the text of a European patent is not drawn up in one of the official national languages, a translation of the text must be supplied. The translations must be filed in the respective designated Contracting States within three months (six months in Ireland) after the publication of the mention of the grant. In the event of failure to observe the relevant national provisions, the European patent will be deemed to be void ab initio. The circumstances in which such a loss of rights occurs are determined by the national law of the Contracting States concerned. In Austria, France, Italy, Sweden and Switzerland/Liechtenstein, re-establishment of rights in the event of failure to observe the time limit for filing the translation is possible subject to the requirements of the national law of the State concerned.
London Agreement: the translation requirements have changed in connection with the language agreement (“London Agreement”) which entered into force on May 1, 2008. The agreement provides that countries that have an official language that is also an official language of the EPO (i.e. English, French or German) will no longer require the translation of a European patent, even if the language in which the patent is granted is not an official language of the country. Up to September 2019, the London Agreement entered into force for the following member States: Albania, Belgium (as of September 1, 2019), Croatia, Denmark, Finland, France, Germany, Hungary, Iceland, Ireland, Latvia, Lithuania, Luxembourg, Monaco, The Netherlands, North Macedonia, Norway (as of January 1, 2015), Slovenia, Sweden, Switzerland/Liechtenstein and the United Kingdom. Of these the following countries will not require a translation: Belgium, France, Germany, Ireland, Luxembourg, Monaco, Switzerland/Liechtenstein and the United Kingdom. Other countries, which do not have an official language that is also an official language of the EPO, will be able to choose one of the official languages as a “prescribed language” into which European patents will have to be translated in order to enter into force in their country. This applies to: Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, The Netherlands, North Macedonia, Slovenia and Sweden.
National renewal fees are due for the years which follow that in which the mention of the grant of the European patent is published in the “European Patent Bulletin”.