A step-by-step guide to the grant procedure
This guide provides basic information about the steps involved in the European patent granting procedure. Before applying for a patent, you should make sure that this is the best option for your invention.
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1 Before applying for a European patent
First, it is important to know what inventions and patents are.
An invention can be, for example, a product, a process or an apparatus. To be patentable, it must be new, industrially applicable and involve an inventive step.
Patents are valid in individual countries for specified periods. They are generally granted by a national patent office, or a regional one like the EPO. Patents confer the right to prevent third parties from making, using or selling the invention without their owners’ consent.
Patents should not be confused with the other kinds of intellectual property rights available:
- utility models can be registered in some countries, to protect technical innovations which might not qualify for a patent
- copyright protects creative and artistic works such as literary texts, musical compositions and broadcasts against unauthorised copying and certain other uses
- trade marks are distinctive signs identifying brands of products or services; they may be made up of two- or three-dimensional components such as letters, numbers, words, shapes, logos or pictures, or even sounds
- designs and models protect a product’s visual appearance, i.e. its shape, contours or colour.
Before applying for a patent, it is advisable to carry out a patent search.
There are different routes to patent protection and the best route for you will depend on your invention and the markets your company operates in. The European Patent Office accepts applications under the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT). If you are seeking protection in only a few countries, it may be best to apply direct for a national patent to each of the national offices.
A European patent application consists of:
- a request for grant
- a description of the invention
- drawings (if any)
- an abstract.
Applications 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 has to be submitted. Although the services of a professional representative are mandatory only for applicants residing outside Europe, the EPO advises all applicants to seek legal advice.
3 Filing and formalities examination
The first step in the European patent granting procedure is the examination on filing. This 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 of the invention or
- a reference to a previously filed application.
If no claims are filed, they need to be submitted within two months.
This is followed by a formalities examination relating to certain formal aspects of the application, including the form and content of the request for grant, drawings and abstract, the designation of the inventor, the appointment of a professional representative, the necessary translations and the fees due.
While the formalities examination is being carried out, a European search report is drawn up, listing all the documents available to the Office that may be relevant to assessing novelty and inventive step. The search report is based on the patent claims but also takes into account the description and any drawings. Immediately after it has been drawn up, the search report is sent to the applicant together with a copy of any cited documents and an initial opinion as to whether the claimed invention and the application meet the requirements of the European Patent Convention.
5 Publication of the application
The application is published – normally together with the search report – 18 months after the date of filing or, if priority was claimed, the priority date. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination. Alternatively, an applicant who has requested examination already will be invited to confirm whether the application should proceed. Within the same time limit the applicant must pay the appropriate designation fee and, if applicable, the extension fees. From the date of publication, a European patent application confers provisional protection on the invention in the states designated in the application. However, depending on the relevant national law, it may be necessary to file a translation of the claims with the patent office in question and have this translation published.
6 Substantive examination
After the request for examination has been made, the European Patent Office examines whether the European patent application and the invention meet the requirements of the European Patent Convention and whether a patent can be granted. An examining division normally consists of three examiners, one of whom maintains contact with the applicant or representative. The decision on the application is taken by the examining division as a whole in order to ensure maximum objectivity.
7 The grant of a patent
If the examining division decides that a patent can be granted, it issues a decision to that effect. A mention of the grant is published in the European Patent Bulletin once the translations of the claims have been filed and the fee for grant and publication have been paid. The decision to grant takes effect on the date of publication. The granted European patent is a “bundle” of individual national patents.
Once the mention of the grant is published, the patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers. In a number of contracting states, the patent owner may have to file a translation of the specification in an official language of the national patent office. Depending on the relevant national law, the applicant may also have to pay fees by a certain date.
After the European patent has been granted, it may be opposed by third parties – usually the applicant’s competitors – if they believe that it should not have been granted. This could be on the grounds, for example, that the invention lacks novelty or does not involve an inventive step. Notice of opposition can only be filed within nine months of the grant being mentioned in the European Patent Bulletin. Oppositions are dealt with by opposition divisions, which are normally made up of three examiners.
10 Limitation / revocation
This stage may also consist of revocation or limitation proceedings initiated by the patent proprietor himself. At any time after the grant of the patent, the patent proprietor may request the revocation or limitation of his patent. The decision to limit or to revoke the European patent takes effect on the date on which it is published in the European Patent Bulletin and applies ab initio to all contracting states in respect of which the patent was granted.
Decisions of the European Patent Office – refusing an application or in opposition cases, for example – are open to appeal. Decisions on appeals are taken by the independent boards of appeal. In certain cases it may be possible to file a petition for review by the Enlarged Board of Appeal.