Up to the international application date or earliest priority date + 31 months

The European Patent Office (EPO) considers that the entry in the European regional phase from an international application has become effective when all the requirements for entry in the EPO regional phase according to the European Patent Convention (EPC) are met. The minimum requirements are the following:

1. Filing a translation of the international application in one of the three official languages of the EPO (English, French or German) if the international application is not in one of these languages.
2. Indicating the documents that will be used for the procedure for prosecuting the European patent application with the EPO.
3. Paying the following official fees:

• Filing fee;
• Search fee (if the EPO was not the International Searching Authority).

Furthermore, the European patent application is not processed by the EPO until after 31 months from the international filing date. This wait can be avoided and prosecution accelerated by requesting early processing of the application under Art. 23(2) or 40(2) PCT.

Up to the latest of the international filing date or earliest priority date + 31 months, or the publication date of the International Search Report + 6 months

Up to the latest date between: 31 months from the international filing date or earliest priority date, and 6 months from the publication date of the International Search Report, examination of the European patent application must be requested and:

1. Paying the following official fees:

• examination fee*;
• designation fee;
• optional: extension fee(s) for Bosnia and Herzegovina (BA) and Montenegro (ME); and.
• optional: validation fee(s) for later validation of a European patent in Cambodia (KH), Republic of Moldova (MD), Morocco(MA), and Tunisia (TN) so that the national patent(s) is/are granted in any of these States.

(*) in case the applicant has its residence or principal place of business within a Contracting State of the European Patent Convention that has a language other than English, French or German as an official language, or is a national of that Contracting State but resides abroad, at that stage it will be necessary to confirm whether the applicant is a natural person, a non-profit organization, a university, a public research organization, or a Small or Medium-sized Enterprise (SME) so that a reduction of 30% of the examination fee can be requested in due course (for a definition of SME, cf. footnote 2 in this document).

If the examination is not requested and the corresponding fees are not paid, the application will be deemed to be withdrawn.

Further, starting from the third year counted from the international filing date, annual renewal fees need to be paid to the EPO for maintenance of the application until the European patent has been granted, or the application has been withdrawn or abandoned.

Date on which prosecution of the European patent application began + ~2 months

In those cases where the PCT was published in a language other than English, French or German, the EPO publishes the translation of the European patent application.

Where the PCT is published in English, French or German, the EPO will not publish the application again and the publication of the PCT international application shall be held as effective.

In addition to the provisional protection rights conferred to the applicant through the international application, the applicant is also entitled to provisional protection rights from the publication date of the European patent application, subject to the eventual granting of the European patent. However, a Contracting State not having the language of the proceedings (i.e., the language in which the application is prosecuted, e.g., English) as an official language may prescribe that such provisional protection shall not be effective until a translation of the claims into one of its official languages has been made available to the public in the manner prescribed in its national law, or has been communicated to the person using the invention in that State. Should you wish to enforce provisional protection rights in certain Contracting States, please contact us.

Date on which prosecution of the European patent application began + ~6 months

The EPO allows the applicant to make voluntary amendments in the application and grants a six-month term counted from a notification under Rules 161 and 162 EPC issued by the EPO for that purpose. As required by the EPC, there must be support for the amendments in the application documents as original filed, either explicitly or implicitly, for the amendments to be allowable. All amendments and the support for the same shall be clearly specified.

The prior art search performed by the EPO (in the event that such search must be performed, as explained below) and the examination of the application shall be done based on the application as amended. As explained in the following point, if the EPO acted as the International Searching Authority and/or International Preliminary Examining Authority or Supplementary International Searching Authority, the EPO will not issue a new Search Report. However, the EPO can conduct a prior art search again where claims that were not previously in the search are included, in which case the written opinion will be attached to an official communication. Likewise, if the EPO was the International Searching Authority, a reply to the objections of the International Search Report and Written Opinion must be filed within the same term for filing voluntary amendments.

Reception of this notification as well as the mandatory 6-month wait for the EPO to take into account a possible reply can be avoided by means of an express request.

Date on which prosecution of the European patent application began + ~6 months

In the event that the EPO acted as the International Searching Authority and/or as the International Preliminary Examining Authority or as the Supplementary International Searching Authority in the international phase, notification under Rules 161 and 162 EPC relative to making possible voluntary amendments in the application, the applicant shall also be required to file observations and/or amendments to the application if there are any objections in the International Preliminary Report on Patentability (whether it is drawn up from the International Search Report or the International Preliminary Examination Report by the EPO) or in the Supplementary International Search Report for the application to meet the patentability requirements of the EPC. The applicant will also be required to pay the official fees for additional claims in the event of there being more than 15 claims in the set of claims in the file once the reply is filed.

A reply to the International Preliminary Report on Patentability or the Supplementary International Search Report is mandatory whenever the report was drawn up by the EPO and contains objections. If no reply is filed, the European patent application will be deemed to be withdrawn.

Usually, a “provisional” reply to the objections can be enough to prevent the application from being deemed to be withdrawn. BALDER recommends to file a complete reply, including all amendments that the Applicant may wish to have entered in the application since no further amendments may be made later on during prosecution of the application without the consent of the Examining Division.

Deadline for replying to the notification under Rules 161 and 162 EPC + ~6 months

In those applications where the EPO did not act as the (Supplementary) International Searching Authority or International Preliminary Examining Authority in the international phase, and once the term for voluntary amendments to the application has ended, the EPO draws up a supplementary prior art search and issues the Supplementary European Search Report together with a preliminary patentability opinion on the claimed invention. The EPO issues said report ~six months from the deadline for replying to the notification under Rules 161 and 162 EPC or from the date on which the request was made not to receive such communication.

Up to the publication date of the Supplementary European Search Report + 6 months

Once the Supplementary Search Report has been prepared and since the examination fees had already been paid beforehand, the EPO must be given confirmation that the prosecution of the present application is to continue in that case. For this confirmation to be effective, observations and/or amendments in view of the result of Supplementary European Search Report shall be filed for the application to meet the requirements of the EPC.

A reply to the Supplementary Search Report is mandatory whenever the report contains objections. If no reply is filed, the European patent application will be deemed to be withdrawn.

Usually, a “provisional” reply to the objections can be enough to prevent the application from being deemed to be withdrawn. BALDER recommends to file a complete reply, including all amendments that the Applicant may wish to have entered in the application since no further amendments may be made later on during prosecution of the application without the consent of the Examining Division.

Variable duration, starting from the moment in which a reply to the corresponding Report drawn up by the EPO has been filed or the term for doing so has lapsed

The Examining Division of the EPO reviews whether the application meets all the requirements of the EPC. These requirements include, inter alia, whether the claimed subject-matter relates to a patentable invention that is novel and involves an inventive step over the prior art, and is industrially applicable.

The Examining Division issues official communications -Office Actions- when it considers that the requirements of the EPC are not met. Office Actions are issued while the applicant responds to such communications with observations and/or amendments for meeting the requirements of the EPC, including those observations and/or amendments in defence of the patentability of the claimed invention, thereby allowing prosecution of the application to advance.

As required by the EPC, there must be support for the amendments in the application documents as original filed, either explicitly or implicitly, for the amendments to be allowable. All amendments and the support for the same shall be clearly specified.

Variable, after the examination phase is completed

When the patent application meets all the requirements of the EPC, the EPO issues an official communication indicating its intent to grant the European patent. This communication includes a copy of the documents on the basis of which the EPO is prepared to grant the European patent. The text and drawings proposed for grant by the EPO could include amendments made by the Examining Division.

The communication on intention to grant the European patent triggers a four-month term for:

1. Accepting the text and drawings proposed by the Examining Division or requesting modification of the same by way of a reasoned statement with amendments.
2. Paying the following official fees:

– grant and printing fees;

– renewal fees due (if any); and

– claims fees (if any).

1. Filing translations of the claims into the two other EPO official languages, e.g., into German, French, and English.

Any divisional European patent application must be filed during pendency of the parent application. Thus, in case that divisional applications are to be filed, it is advisable to do so at this stage, but in any case, at least one day before the European patent is granted.

Date of intention to grant communication + ~6 months

Once the text and the drawings of the intention to grant communication are accepted, and the additional requirements have been met, the EPO publishes the mention of grant, which is the date on which the European patent will take effect.

Divisional European patent applications can be filed up to one day before the date on which the decision to grant the European patent will take effect.

Publication of the grant triggers a three-month term for completing validation formalities (applicable to most of the Designated States) in the countries where the protection rights conferred by the European patent are to take effect. Information about the validation procedure is available in this link.

In addition, publication of the grant triggers the nine-month period during which third parties may file oppositions against the granted European patent.