Patent Application Procedures in Europe by Dr. Ulla Allgayer Patent Attorney in Munich Germany.

Patent Application Procedures Patent Application Procedures inin

Europe Europe

by Dr. Ulla Allgayer Patent Attorney in Munich Germany

Europe – geographicalEurope – geographical

KRAMER BARSKE SCHMIDTCHEN

Europe – politicalEurope – political

Members of the EC

Candidates

Harmonization of the Patent law

Founding of a European Patent Organisation (EPO) in 1973 with the task to facilitate the granting procedure

Article 2 EPC:The European patent shall in each of the Contracting States for which it is granted, have the effect of … a national patent grantedby that state.

Europe – EPOEurope – EPO MembersMembers

• 30 Contracting States: (AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT,LU, MC, NL, PL, PT, RO, SE, SI, SK, TR)

• 5 Extension States: (AL, HR, LT, LV, MK)

Inventor´s rights (e.g. employee´s inventions) for not yet filed patents;

Applications by persons not having the right to the patent

National Regulations

Pre-administrative phase

Disputes are solved by national

authorities

Administrative Core Phase

Granting procedure; Oppositions

European Patent Convention (EPC) +Implementing Regulations

European Patent Office

Post-administrative phase

Nullity, Infringement, European Patent

as an object of property

National Regulations

Disputes are solved by national

authorities

Even though there are some „guidelines“ for the national courts how to interpret a European Patent in the post administrative phase,

only the administrative core phase is unitary.

Therefore:

Patents can be attacked most easily as long as they are inthe administrative core phase with effect for all contracting states;

Transfers, name changes etc. can be easily recorded in this phase;

After grant (opposition) the effect of any measures is only national.

Obtaining Patent Protection in EuropeObtaining Patent Protection in Europe

International (PCT) Application

• designating EP (selection of EP contracting states not neccessary)

• designating one or more European countries (designation of BE, CY, FR, GR, IE, IT, MC, NL, SI leads to EP application)

National Patent Application

• selection of states in which protection is sought upon filing

EP Application

• selection of EP contracting states in which protection is sought not neccessary upon filing

NATIONAL (INDEPENDENT) PATENTS

The way to get a EP PatentThe way to get a EP PatentFiling date Language: EN, DE, FR

• Claiming priority

Priority of a previous application can only be claimed once ???

The way to get a EP PatentThe way to get a EP PatentFiling date

Language: EN, DE, FR

• Claiming priority

Priority of a previous application can only be claimed once ???

•Search request (accelerated search possible, PACE program)

• Fees: Filing fee, Search fee, Claim fees (for claims more than 10)

The way to get a EP PatentThe way to get a EP PatentFiling date(claiming priority)

Publication of the Application (electronically as A1, A2)

Publication of the European Search Report (together with application (A1) or separately (A3))

riorit

Formal Examination

Search Stage European Search Report

Within 6 months after publication of the Search Report:• Designation of contracting states (max. 7 designation fees)• Request for substantive Examination (fee for examination request; accelerated Examination possible, PACE)

BEST, EESR

When can amendments be filed? Rule 86 EPC:(1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided.

(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 description, claims and drawings.

(3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication.

No further amendment may be made without the consent of the Examining Division.

Filing Date ESRExaminationRequest

1st OfficeAction …further Office Action(s)

R 86(1):No preliminaryamendments

R 86(2): amendments possible

R 86(3):One amendment

R 86(3):Amendments only with consent

response

The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)

Office Action(s), Response(s):

Examination as to unity, clarity, novelty, inventive step …

Relevant prior art:

• all publications prior to the priority date of the application, independent of their nature (written, orally, use)

• with respect to novelty additionally all EP applications having a relevant date before the relevant date (filing date or priority date) of the respective application but published afterwards and designating the same states

Office Action(s), Response(s):

Examination as to unity, clarity, novelty, inventive step …

Possibly amendments

Strict handling of requirement of original disclosure

Informal Interwiew with the Examiner

Personally or by phone

Oral proceedings

Third party observations possible

Problem solution approach for asessment of inventive step:

1. Identification of the „closest prior art“

2. Identification of the differing features

3. Determination of the objective problem solved by these features

4. Definition of the objective object

5. Could-would approach:

Is there a document suggesting the missing features? (Can the skilledperson combine these documents and arrive at the claimed solution?)

Is there any motivation for the skilled person combining these documents? (Would the skilled person combine these documents)

European Claim draftingEuropean Claim drafting

• Multiple dependent claims are allowed and favorable (count as 1 claim)

• Only one independent claim of same category (apparatus, method, use)

• two part form, reference numbers

The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)Office Action(s), Response

Communication under R. 51(4) EPC

• Applicant is informed of proposed text for grant

Approval/Disapproval within usually 4 months:

• filing translation of claims in two EPC languages

• fee for grant

Grant of a European Patent; mentioned in European Patent Bulletin

If application is refused:

Possibility of appeal

Appeals are handled by the EPO Boards of Appeal

They are independent within the EPO

Two technically qualified members One legally qualified member

Validation of the patent in one or more designated states

translation of the patent specification

• publication fee

Grant of a European Patent; mentioned in European Patent Bulletin

DEFI HU

OppositionOppositionFiling of an Opposition within 9 months after mention of grant (about 6%-10% of granted EP-patents):

• two instances (Opposition division of EPO, Boards of Appeal)

• can be filed by anybody; opponent position is not transferable

• 1,5 to 2,5 years per instance

• revocation/maintenance valid for all states

• plural oppositions by different parties are commonly trated

•Third party observations possible

Grounds for opposition:

The subject matter of the European patent is not patentableThe invention is not disclosed in a manner sufficiently clearSubject matter extends beyond content of application as originally filed

Trap situation:

Amendment during substantive examination

This amendment turns out not to be sufficiently supported by original disclosure

It cannot be kept in the claims, because this would contravene the requirement that the application must not comprise subject matterextending beyond the content of the application as originally filed

It cannot be removed from the claims, because this would broaden the scope of the claims

Revocation of the patent !!!

OppositionOppositionOpposition proceedings end

• payment of annuities

• nullity suits

• infringement suits

• ….

PriorityPriority

Can a priority of an application validly be claimed more than once for EP patent applications?

26. March 1987

19. June 1987

02. March 1988

EP 1: claim1, claim2, description

EP 2: claim2, description

03. March 1988

PriorityPriority

Can a priority of an application validly be claimed more than once for EP patent applications?

26. March 1987

19. June 1987

02. March 1988

03. March 1988

If priority claim is invalid: EP1 is novelty destroying for EP2 (Art. 54(2) EPC)

T 998/99 L´Oréal:

EP2 was considered not claiming validly priority of FR1

Article 87(1) EPC does not permit to claim the same priority when applying in an identical country for several applications concerning the same invention.

EP2 received filing date as valid date

EP1 was novelty destroying for EP2

SoulutionSoulution

26. March 1987

19. June 1987

EP: claim1, claim2, description

26. March 1988 Divisional Applications

Embodiment 1Embodiment 2Embodiment 3

Embodiment 1Embodiment 2

Embodiment 4

Embodiment 1Embodiment 2Embodiment 3Embodiment 6

Embodiment 4

Former situation:

EPO The Hague (NL) EPO Munich (DE)

Formal Examination

Search Substantive Examination

Oppositions

Appeals

Enlarged Board of Appeal

BEST and EESR

Bring Examination and Search Together (BEST)

EPO The Hague (NL) EPO Munich (DE)

Formal Examination

Search Substantive Examination

X EP 9999999

Y US 9877987

Y CH 87765677

Art. 52, 54 …

When can amendments be filed? Rule 86 EPC:(1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided.

(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 description, claims and drawings.

(3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication.

No further amendment may be made without the consent of the Examining Division.

Filing Date ESRExaminationRequest

response

Extended European Search Report (1.July 2005):R44a EPC(1)The European 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 this Convention, unless a Communication under Rule 51, paragraph 2 or paragraph 4, can be issued.

(2) The opinion under paragraph 1 shall not be published together with the search report.

Filing Date EESRExaminationRequest

response

EESR = ESR + „written opinion“(Content of 1st Office Action)

Art. 52, 54 …

X EP 9999999

Y US 9877987

Y CH 87765677

Patent Application Procedures in Europe by Dr. Ulla Allgayer Patent Attorney in Munich Germany.

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