The EPOand the Procedures

Edoardo PastorePatent Examiner, Cluster ComputersEuropean Patent Office

Torino, 13-14 October 2011

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The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications.

Disclaimer:

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Agenda

1. Procedure up to grant

2. Further proceedings before the EPO

3. Appeal procedure

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4

EP

IT NOFI

TR

RO

DE

How to obtain patent protection in Europe?

separate procedures for each state

procedures differ according to national law

one application filed at one office for up to 40 states

one procedure applicant selects the desired states one European patent

for up to 40 states results in a bundle of national patents

IT UKDE

DE IT UK

2. The regional route: European Patent Convention

1. The national route

There is no such thing (y

et)

as an EU-patent!

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Example: the European granting procedure

searchsearch publicationpublication examinationexamination grantgrant

NOIE

ROyy

IT

DE

FI

CZ

nationalvalidationnationalvalidation

48 - 600 18 months 24

withdraw?

application filed

opposition period starts

the invention becomes visible to the competitors!

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How does it work with society?

inventor public

represents the public

checks if the invention is disclosed

exclusive rights for (max.) 20 years

discloses how the invention works

issues certificate of exclusive right (patent)

gene

rate

sle

gal c

erta

inty

procedure up to grant

office

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The European granting procedure

searchsearch publicationpublication examinationexamination grantgrant

48 - 600 18 months 24

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filingfiling

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Filing a European application

Europeanpatent

application

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NPO

EPO

The Hague

Berlin

Munich

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Filing a divisional application

Europeanpatent

applicationDivisional

Europeanpatent

applicationParent

conditions!

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NPOsNPO

EPO

The Hague

Berlin

Munich

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The European granting procedure

searchsearch publicationpublication examinationexamination grantgrant

48 - 600 18 months 24

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filingfiling

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Examination

inventor office public

examination

decision:grant orrefusal

third partyobservation

file inspection

requests

objections

amendments

sends decision publishes decision

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Examining Division

Article 18 EPC

• Responsible for the examination of European patent applications

• Shall consist of three technically qualified examiners

• Examination, as a general rule, entrusted to one member of the Examining Division

• Oral proceedings shall be before the Examining Division itself

• If the Examining Division considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner

• In the event of parity of votes, the vote of the chairman of the Examining Division shall be decisive

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Number of staff in 2010

• almost 4000 patent examiners

• working in

• directorates (25-35 examiners)

• technical fields (e.g. G06Q /EC)

Munich 3 727

The Hague 2 661

Berlin 277

Vienna 108

Brussels 5

Total 6 778

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Staff from 31 different countries (2009)

Country Number of staffAT Austria 237

BE Belgium 359

BG Bulgaria 35

CH Switzerland 74

CY Cyprus 8

CZ Czech Republic 20

ES Spain 447

DE Germany 1 851

DK Denmark 75

EE Estonia 7

FI Finland 49

FR France 1 225

GB United Kingdom 507

GR Greece 165

HU Hungary 29

IE Ireland 82

HR Croatia 2

Country Number of staff

IT Italy 507

LT Lithuania 4

LU Luxembourg 69

LV Latvia 5

MT Malta 2

NL Netherlands 609

SE Sweden 125

PL Poland 62

PT Portugal 87

RO Romania 115

SI Slovenia 14

SK Slovakia 15

TR Turkey 29

Others 2

Total 6 818

IS Iceland 1

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Grant of a patent

Positive outcome of the examination procedure(Rule 71(3) EPC)

intention to grant a patent version of the patent (e.g. which claims) invitation to pay fees for grant and printing invitation to submit translation of claims

Decision to grant a European patent(Rule 71(11) EPC)

fees for grant and printing paid translations submitted

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Cost of a European patent up to grant

patent office fees*: 5000 EUR

attorney fees*: 10000 EUR

translations*: 3000 EUR

Germanpatent

Europeanpatent

* estimated cost Actual cost depends very much on the specifics of the individual case.

4 types of cost:

renewal fees: from 3rd year on

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How to obtain patent protection in Europe/ worldwide?

3. The international route: Patent Cooperation Treaty (PCT)

just one application for up to 144 countries (June 2011)

harmonisation of formal standards for a patent application: language, patent agent, fees etc.

PCT offers an international search report and an opinion.

After 30 - 31 months, the applicant has to decide if he wants to proceed with the patent examination proceedings in one or more jurisdictions.(cost implications)

PCT

IN

US

AU

GB

CN

There is no such thing

as an international patent!

Concept of Priority (art. 4)

„Any person who has duly filed an application for a patent ... In one of the countris of the Union,... shall enjoy, for the purpose of filing in the other countries, a right of priority of ....12 months

First filing = priority date(IT)

EPOFiling date <> priority date

12 months

US JPO

Paris Convention (1883)

Patent Cooperation AgreementPCT

PCT outputs an:- Search Report- Written OPINIONs on patentability (not patent !!)

Filing

17/18 mesi

Search report Written opinion

28 mesi

Report on patentability

30/31 months

PCT vs EPO

PCT ends with an opinion EPO ends with a grant/refusal

The „filing and examination“ costs are comparable

PCT: the applicant has 30/31 months after the priority date in order to decide whether a nations application has to be filed.

More time.

In the „not PCT “ filing procedure, (i.e. EPO; US JP) the applicant has 12 months from the priority date

Less Time.

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Agenda

1. Procedure up to grant

2. Further proceedings before the EPO

3. Appeal procedure

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Procedures before the EPO

EXAMINATION

grant of a European

patent

refusal

1. Instance 2. Instance

Eur

opea

n P

aten

t Offi

ce

revocation

maintenance revocation

OPPOSITIONAPPEAL

national courts

nullity/ infringement proceedings

national law

natio

nal

bod

ies

validation in EPO member states

national patents

Board of Appeal

limitation

Opposition Review of the patent granted; may be revokedprocedure: or confirmed (even if in an amended form)

Responsible: Opposition divisionParties: the patent proprietor

at least one opponent (inter partes)

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Examination and Opposition

Examination Grant of a European patent or refusal of theprocedure: application

Responsible: Examining divisionParty: the applicant / inventor (ex parte)

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Opposition Division

Article 19 EPC• Shall consist of three technically qualified examiners, at least two of

whom shall not have taken part in the proceedings for grant of the patent

• An examiner who has taken part in the proceedings for the grant of the European patent may not be the chairman

• Before a decision is taken on the opposition, the Opposition Division may entrust the examination of the opposition to one of its members

• Oral proceedings shall be before the Opposition Division itself• May be be enlarged by the addition of a legally qualified examiner who

shall not have taken part in the proceedings for grant of the patent• In the event of parity of votes, the vote of the chairman of the

Opposition Division shall be decisive

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Limitation and Revocation

Limitation Limit the scope of a patent which has beenprocedure: granted

Responsible: Examining DivisionParty: Patent proprietor (ex parte)

Revocation Revoke patent in its entirety as of as soon asprocedure: possible

Responsible: Examining DivisionParty: Patent Proprietor (ex parte)

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Agenda

1. Procedure up to grant

2. Further proceedings before the EPO

3. Appeal procedure

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Prerequisite for Appeals

• a decision of a Receiving Section, Examining Division, Opposition Division or Legal Division

• which is a decision with an adverse effect

Examples of appealable decisions:

• a decision of the Examining Division to refuse an application

• a decision of the Opposition Division

Examples of non-decisions:

• application deemed to be withdrawn

• search report / non-establishment of search report (Rule 63 EPC)

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Appealable Decision: Examination

Request of the applicant:

Decision:

a patent be granted

is appealable"application is refused"

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not appealable

Request of the applicant:

Decision:

a patent be granted

"a patent is granted"

Any Questions?

Thank you

for your attention!

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Patent teaching kit

Further information

Designed for use by university lecturers, it contains presentations, teachers' notes, background information, real-world examples and case studies - everything lecturers need to provide students with a comprehensive introduction to the patent system, including information on how to file patent applications and search for existing patents.

free of charge (download or hard copy)http://www.epo.org/learning-events/materials/kit.html

core modules:- an introduction for students of science, engineering and business administration- an introduction for law students

sub-modules:- searching for existing patents - how to use the esp@cenet database - the use of patents by a university spin off-understanding patent claims: 7 case studies

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Brochures by the WIPO:

Further information (download)

Inventing the future - An introduction to patents for SMEs

Brochures by the EPO:

Part 1: How to get a European patent

Part 2: PCT procedure before the EPO – "Euro-PCT"

European patents and the grant procedure

Secrets of Intellectual Property: A Guide for Small and Medium-sized Exporters

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Further information (download)

EPO:Patent information:Adding certainty to your patent, legal and business decisions

EPO: Guide for beginners to the esp@cenet service. In six easy steps it shows newcomers to esp@cenet how to perform simple searches.

EPO: These guides explain how to use online European patent register, online public file inspection, alert service.

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