PROSECUTION OF A EUROPEAN PATENT APPLICATION
EUROPEAN SEARCH REPORT
INTENTION TO GRANT
The European Patent Office (EPO) accords a filing date for the patent application if all the filing requirements of the European Patent Convention (EPC) are met, or as soon as all the filing requirements are met.
Filing date + 2 months
In the event that the European patent application has been filed in a language other than English, French or German, a translation must be furnished within two months of the filing date.
EUROPEAN SEARCH REPORT
Filing date + 6 months
Once the application has been filed and the formal examination has concluded, the EPO carries out a prior art search and issues the European search report together with a preliminary opinion on patentability of the claimed invention. The EPO issues the extended European Search Report around six to eight months from the filing date.
Earliest priority date + 18 months
The EPO publishes the European patent application soon after expiry of a period of 18 months from the earliest priority date (if no priority is claimed, from the filing date). If the European Search Report is available, it is published together with the application; if it remains to be drawn up by the EPO, the European Search Report is published separately.
The Applicant is entitled to provisional protection rights from the publication date of the European patent application, and 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) 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 have provisional protection in certain Contracting States, please contact us.
Publication date of the European Search Report + 6 months
The publication of the European Search Report triggers a six-month term for:
- Paying the following official fees:
- examination fee*;
* 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 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 of http://documents.epo.org/projects/babylon/eponet.nsf/0/4ED45F44F1F2CD94C1257CAC00472E03/$File/epo_form_1011_04_14_non_editable.pdf)
- 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 national patent(s) is/are granted in any of these States.
- Filing observations and/or amendments in view of the European Search Report so that the application meets the requirements of the EPC. A reply to the European Search Report is mandatory whenever it contains objections. If no reply is filed, the application will be deemed to be withdrawn.
Usually, a “provisional” reply to the deficiencies 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 since no further amendments may be made later on during prosecution without the consent of the Examining Division.
Further, starting from the third year counted from the filing date, annual renewal fees need be paid to the EPO for maintenance of the application until the European patent has been granted, or the European patent application is refused or deemed withdrawn.
Variable duration, starting from the moment examination is requested
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 the requirements of the EPC are not met. The official communications are issued with observations and/or amendments for meeting the requirements of the EPC, thereby advancing prosecution of the application.
As required by the EPC, there must be support for the amendments in the application as originally filed, either explicitly or implicitly, for the amendments to be allowable. All amendments and the support for the same in the original applications documents shall be clearly specified.
INTENTION TO GRANT
The communication on intention to grant the European patent triggers a four-month term for:
- Accepting the text and drawings proposed by the Examining Division, or requesting modification of the same by way of a reasoned statement with amendments.
- Paying the following official fees:
- grant and printing fees;
- renewal fees due (if any); and
- claim fees (if any).
- 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.
viii) Grant of the European patent and validation formalities – 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 the grant, which is the date on which the decision to grant 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. Information about the validation procedure is available in this link.
Publication of the grant of the European patent triggers a 3-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.
In addition, publication of the grant triggers the 9-month period during which third parties may file oppositions against the granted European patent.
Patent is granted.
As indicated in this link, publication of the grant of the European patent triggers a 3-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 and that are members of the European Patent Convention. Likewise, when extension fees and/or validation fees have been paid together with the designation fees, the extension/validation formalities for the respective States need also be completed at this time so that protection rights take effect in these States as well.
The Contracting States of the European Patent Convention are the following: AL, AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HR, HU, IE, IS, IT, LI, LT, LU, LV, MC, MK, MT, NL, NO, PL, PT, RO, RS, SE, SI, SK, SM and TR.
Regarding validation formalities, following the entry into force of the London Agreement there are three different groups of Contracting States:
a) Contracting States which have NOT signed the London Agreement.
AT, BG, CY, CZ, EE, ES, GR, IT, MT, PL, PT, RO, SM, RS, SK, TR
Validation formalities must be completed and submission of a translation of the entire text of the patent is in most cases required. Otherwise, the European patent will be deemed void ab initio for the corresponding State.
b) Contracting States which have signed the London Agreement:
BE, FR, GB, CH, DE, IE, LI, LU, MC.
Submission of a translation of the text of the patent is no longer necessary since the granted European patent is automatically regarded as a regular national patent. Thus, no further action would be required (apart from payment of yearly maintenance fees).
However, it may be advisable to ask a local patent attorney to appoint himself as an address of service before the local Patent Office in order to receive any eventual notification regarding the national patent.
c) Contracting States which have signed the London Agreement BUT submission of a translation of the claims is still compulsory. Otherwise, the European patent will be deemed void ab initio for the corresponding State, pursuant to Art. 65(2) EPC:
AL, DK, FI, HR, HU, IS, LT, LV, MK, NL, NO, SE and SL.