4) The patent application process via the EPC Flashcards
What are the advantages of the EPC?
Economy and efficiency
• A cost-effective and time-saving way of applying for patent protection in several different countries.
Unitary effects in the contracting states
• Term, scope of protection, binding text, grounds for revocation.
A ‘strong’ patent
• Every European patent has undergone substantive examination and can be obtained for countries which otherwise operate only a registration system
What are the requirements for a patent to be granted on an invention in the EPC?
- Art. 52(1): European patents shall be granted for any inventions, in all fields of technology, provided that they are:
- new
- involve an inventive step and
- are susceptible of industrial application.
What are not inventions in the EPC?
• Art. 52(2): The following are not inventions (as such):
a. discoveries, scientific theories and mathematical methods;
b. aesthetic creations;
c. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
d. presentations of information.
What are the exceptions to patentability in the EPC?
• European patents shall not be granted in respect of:
• (a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
• (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
• (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
[Art. 53]
What is the definition of novelty in the EPC?
- Art. 54(1): An invention shall be considered to be new if it does not form part of the state of the art.
- The definition of the state of the art in the EPC amounts to absolute novelty, i.e. the state of the art is held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing or priority date [Art. 54(2)].
What are non-prejudicial disclosures to novelty in the EPC?
• a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing (note not priority) of the European patent application and if it was due to, or in consequence of:
a) an evident abuse in relation to the applicant or his legal predecessor, or
b) display at an official, or officially recognised, international exhibition (must state this on filing)
What are the requirements under Art 54(3) EPC?
• Additionally, the content of European patent applications filed prior to the date of filing or priority date and published on or after that date is considered as comprised in the state of the art in respect of all Contracting States, regardless of designations or designation fees if the later application is FILED on/after 13 December 2007.
• Art 54(3) documents therefore have earlier priority and/or filing dates but have been published after the priority date of the application in suit.
• Also applies to divisional applications if the divisional application was received by the EPO on/after 13 December
2007; the date of filing is irrelevant hence Article 54(3) prior art may apply differently to the parent and the divisional application.
Under Art 54(3) EPC, what parts of an earlier application are prejudicial to novelty?
• The whole content of the earlier application as filed is prejudicial to novelty (and not just the claims). Excludes priority document or abstract.
Under Art 54(3) EPC, what is the content of the earlier application available for assessing?
• The content of the earlier application as disclosed is available for assessing novelty only and not inventive step of the later application (cf US).
Does Art 54(3) include national applications?
• Does not include national applications.
When is a Euro-PCT application Art 54(3) art?
- Euro-PCT application is Article 54(3) art if [R.165]:
- The filing fee to enter EP Regional Phase is paid [R. 159(1)(c)]; and
- The application or its translation into DE/EN/FR is published [R. 153(3)(4)].
What is the EPO’s approach to assessing inventive step?
• The EPO adopts the problem & solution approach to assessing inventive step.
What are the stages to the problem and solution approach?
• In the problem and solution approach there are three main stages:
i. determining the closest single piece of prior art;
ii. establishing the objective technical problem to be solved; and
iii. considering whether or not the claimed invention, starting from the closest prior art would have been obvious to the skilled person.
What are the requirements under Article 57 EPC?
An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.
What are the requirements under Article 82 EPC?
- The European patent application must relate to a single invention only or to a group of inventions so linked as to form a single general inventive concept.
- If several inventions comply with this requirement, the patent application may contain several independent claims in the same category or, according to the circumstances, several independent claims in different categories.
- Lack of unity is not a ground of opposition.
What are the requirements under Article 83 EPC?
Sufficiency
The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Who can apply for a European patent?
- A company or an individual can apply for a European Patent. They will (at some point after filing) have to confirm that they own the invention to be granted a patent.
- If the company or individual does not have either a residence or a principal place of business in one of the member countries of the EPC, then they must be represented by a European Patent Attorney throughout the application procedure, except for the initial filing of the application.
Where can a European patent be filed?
a. at the EPO
b. if the law of a Contracting State so permits or prescribes, at the central industrial property office or other competent authorities in that Contracting State.
• However, divisional applications must be filed directly with the
EPO.
What language can a European patent be filed in?
• European patent applications may be filed in any language
• No definition of “language” is given in the EPC
• Translation into an EPO official language (English, French and
German) within two months of filing
• If not filed, the EPO invites applicant to file translation within two months under R.58
• Further processing excluded but Re-establishment possible
• Translation may be brought into conformity with the application as filed throughout proceedings before EPO
[Art. 14 (1)(2)]
What are the consequences of providing a translation into one of the EPO’s official languages?
- Official language chosen becomes the language of the proceedings. [Art. 14(3)]
- All amendments must be filed in that language. However, in written proceedings any party may use any official language of the EPO
What are the language requirements for applicants in a contracting state with a language other than English, French or German?
- Applicants in a Contracting State with a language other than English, French or German as an official language, and nationals of that State who are resident abroad may file documents which have to be filed within a time limit in a language of the Contracting State concerned. [Art. 14(4)]
- Must file translation within 1 month deadline or deemed not received
- Fee reduction. Applicants making use of Art. 14(4) when filing application are entitled to fee reduction [R. 6(3)]. However, since 1 April 2014, this is limited to SMEs, natural persons, non-profits, universities and public research organisations.
What must an application contain to be accorded a date of filing?
• To be accorded a date of filing, the application must contain [Art. 80/R. 40]:
a) Indication that a European patent is sought
b) Information identifying the applicant (email address/phone number)
c) Description or reference to a previously filed application.
What are the consequences of an application not meeting the requirements to be accorded a date of filing?
• If R.40(a)-(c) requirements are not met, filing date changes to date deficiencies remedied [R.55].
What aspects of an application are irrelevant as to being accorded at a date of filing?
• Note - the following are irrelevant for according a date of filing:
language of the application, claims, fees.
What are the requirements to obtain a filing date based on a reference to a previously filed application?
• To obtain a filing date based on a reference to a previously filed application, must provide on filing [R.40(2)]:
i. Filing date ii. Filing number of that application iii. Office where the application was filed iv. Indication that the reference replaces the description and any drawings
• Certified copy of previous application referred to and translation, if necessary must be filed within two months of filing. If not filed within two months, invitation to file within further two months
• Only able to refer to a single, previously filed application.
Are claims required to be filed to be accorded a date of filing?
• Claims are not necessary for according a date of filing but if no claims are present on filing the EPO will invite the applicant to file claims within 2 months.
What are the consequences if the claims are not present in the application as filed?
- Claims filed later may not contain added matter and must be in the language of the proceedings.
- Since claims usually form the broadest definition of the invention in the application, it is difficult to achieve a broad scope in late filed claims without adding matter. Thus late filing of claims should only be used in cases of emergency.
- Claims may be filed by reference to a previous application.
- Further claims cannot be added prior to search.
Discuss when claims fees are applicable?
- Any European patent application comprising more than 15 claims at the time of filing incurs payment of a claims fee in respect of each claim over and above that number. The claims fee is payable within one month after the filing of the application. [R.45 / Rfees2(1).15]
- If the claims fees have not been paid in due time they may still be validly paid within a non-extendable period of grace of one month of notification of a communication pointing out the failure to observe the time limit.
- If the fees are not paid within this period, the claims for which fees have not been paid are deemed to be abandoned and the applicant is notified to that effect.
- If the patent application contains more than 15 claims at the time of grant, the claims fees are payable at this stage if they have not already been paid. If payment is not made within the fixed period, the application is deemed to be withdrawn.
- This relates to claims fees paid on or after 1 April 2008. Claims 16-50 cost €235. Claim 51 and above cost €580 euro!
What is the purpose of the abstract?
- Merely serves for use as technical information.
- Not available as Article 54(3) prior art.
- Does not form part of application as filed. Thus cannot use for amending content of specification (Article 85, Article 123(2)).
Describe the process for designating states.
Designation of States
• All EPC contracting states at the time of filing deemed to be designated on filing. [Art. 79]
• Single Designation Fee (€580) covers all 38 contracting states. Fee due:
• within six months of the date on which the European Patent bulletin mentions the publication of the European Search Report (changed April 2009); or
• for Euro-PCT applications entering the European phase: 31 months from the date of filing (or the oldest priority date) or six months from the date of publication of the international search report, whichever is the latest.
• If not paid in time the designation is deemed to be withdrawn. No grace period but further processing available.
• The designation of a Contracting State may be withdrawn at any time up to the grant of the European patent.
How many contracting states are there?
• Since 1 October 2010 there are 38 Contracting States:
• Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany,
Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, former Yugoslav Republic of
Macedonia (renamed Republic of North Macedonia, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the UK.
What is an extension state?
- An extension state is not an EPO contracting state but is one which has entered into an extension agreement with the EPO. The agreement means that granted EPO patents can be made effective in that state.
- States having an Extension Agreement with the EPO are: Bosnia and Herzegovina, Montenegro.
Describe the process for extension states.
• Due date to pay the extension fee is the same as for the designation fee. If not paid, a 2 month grace period with 50% surcharge is available. The EPO will not issue a loss of rights communication for the extension fee. Therefore, unless the designation fee is not paid, further processing will not be available.
Describe what a validation state is and the process associated.
- It is possible to pay a validation fee to extend protection to Validation countries. After validation, will confer essentially the same protection as with the 38 Contracting States.
- Morocco since 1 March 2015.
- Moldova since 1 November 2015.
- Tunisia since 1 December 2017.
- Cambodia since 1 March 2018.
- Due date to pay the validation fee is the same as for the extension fee.
- See January 2016 EPO Official Journal for details of the procedure if needed.
When are fees due for a European patent application?
- Filing fee and search fee: due within one month of filing [R.38]. Application deemed withdrawn of not paid. Further processing available.
- Additional fee for more than 35 pages: due within one month of filing the application or the first claims (latest of) [R.38]. Application deemed withdrawn of not paid. Further processing available.
- Claim fee: due within one month of filing [R.45]. One month grace period from notification of failure to pay available.
- Designation fee and extension/validation fees: due within six months from the publication of the search report [R.39]. Further Processing available for designation fee. Grace period available for extension/validation fees.
- Divisional fee (for further divisionals): due within one month of filing divisional. Further processing available
How can a European patent application claim priority?
- Priority may be claimed for a European patent application by a person, or the successors in title of a person, who, in the twelve months prior to the filing of the European patent application, has filed an application for a patent or for the registration of a utility model or for a utility certificate in respect of the same invention, in or for any State party to the Paris Convention for the Protection of Industrial Property or any member of the WTO (for example, Taiwan).
- Priority may also be claimed from an earlier European or PCT application.
- In the event of failure to comply with the twelve-month time limit, re-establishment of rights may be filed. The request for reestablishment of rights for the priority period must be filed within two months of expiry of the unobserved time limit.
What is the process for a EP application to claim priority?
- The date and state or member in or for which the priority application was made and the file number should preferably be provided on filing.
- However, the declaration of priority can be made after filing within 16 months from the earliest priority date claimed, at the latest 4 months from the accorded date of filing.
- Correction of declaration of priority within the same time limit.
- A copy (paper or electronic) of the priority document must be filed by the end of the 16th month after the priority date and it must be certified.
- Note that a priority document is not required if the priority document is available to the EPO such as an earlier EP, JP, Korean, US, PCT filed at EPO or JPO or in the case of a divisional.
- A translation of the priority document is only needed when it is necessary for assessing patentability.
What is partial priority?
- G1/15 “Partial Priority”
- The question referred sought, in particular, to clarify how Art 88(2) second sentence is to be applied in light of G2/98 in cases where a claim encompasses, without spelling out, alternative subject matter having all of the features of the claim (known as generic “OR” claim) and whether parent and divisional applications may be prior art under Art 54(3) against one another in respect of subject matter disclosed in a priority application but not entitled to priority.
- The decision confirmed that individual claims can be entitled to multiple priority dates. In particular, the Enlarged Board held that a “generic ‘OR’-claim”, which encompasses alternative subject matter using a generic term, may not be refused priority, provided that the alternative subject matter has been directly, at least implicitly, and unambiguously disclosed in the priority document.
What is the process for designating an inventor?
- If the applicant is not the inventor or is not the sole inventor then a form for designation of the inventor must be provided.
- Can be filed up to 16 months from priority date (or filing date if no priority is claimed). If the deficiencies are not remedied in due time, the application is refused. Further processing is available for the 16-month period. The period is deemed to have been observed if the deficiency has been remedied before the completion of the technical preparations for publication of the application.
• Note: since 1 April 2021, inventors do not need to indicate their full address but only the
country and place of residence.
When can divisional applications be filed?
- Usually filed to manage unity objection.
- A divisional application can be filed as soon as the parent application is pending and for as long as the parent application is still pending (i.e. until up to but not including the publication by the EPO of the mention of grant in the European Patent Bulletin, i.e. day before grant).
- A divisional can be filed during Appeal proceedings following refusal of an application by an Examination Division because the appeal has suspensive effect. Following G1/09, it is also OK to file a divisional within the 2-month time limit for filing a notice of appeal following such a refusal, even if no appeal is filed.
- R.14 prevents the filing of a divisional if the proceedings for the parent application are stayed (pending entitlement proceedings).
- The parent and divisional applications may not claim the same subject matter, in order to avoid double-patenting (although there is conflicting case-law on this issue).
From 1st April 2014, the 24 month divisional time limit no longer applies – the applicant may file a divisional application relating to any pending earlier EP application.
• The amended R.36 applies to all divisional applications filed on/after 1 April 2014, hence it is possible to file divisional applications in respect of pending EP applications even where the time limit for filing such an application had expired under the previous rule.
Describe the fees associated with a divisional application?
- An additional fee forming part of the filing fee is payable for divisional applications filed in respect of any earlier application which is itself a divisional application, i.e. for divisional applications of second or subsequent generations. The amounts of the additional fee are as follows:
- for a divisional application of the second generation: EUR 210
- for a divisional application of the third generation: EUR 420
- for a divisional application of the fourth generation: EUR 630
- for the fifth and any subsequent generation: EUR 840
What are the requirements for a divisional application?
- Must be filed directly at the EPO (Hague or Munich) and not at national patent offices.
- Application cannot contain subject matter not present in the parent application.
- The filing, search and claims fees are due within 1 month of filing. Designation and examination fees are due within 6 months of the date of publication of the search report of the divisional.
- The application (or the translation thereof) must be filed in the language of the proceedings of the parent.
- The application may be filed by reference to an earlier application.
- Claims may be filed after the date of receipt of the divisional application, within 2 months of an invite to do so.
- The divisional takes the same date of filing and, where applicable, priority date as the earlier application.
Describe the formalities examination.
- Examination as to formal requirements is conducted once a date of filing has been given.
- Where the Receiving Section notes that there are deficiencies which may be corrected it will give the applicant an opportunity to do so.
- If the applicant does not remedy the deficiencies, the application is refused. Further processing is NOT available. [Art. 90]
Describe the process associated when an application is considered to contain a plurality of independent claims.
- Before the search, the Search Division will review the claims.
- If there is a plurality of independent claims in each category not in compliance with certain exemptions (interrelated products, different uses of a product, alternative solutions to a problem), an invite to indicate within 2 months the claims to be searched may be sent [R. 62a].
- Alternatively or in addition, the EPO may choose to raise an objection of lack of unity (see later).
- Cannot amend claims in response to R.62a invite, but can argue and file main and auxiliary requests.
- If no reply is received, Search Division will search the first independent claim in each category.
- During Examination, the claims must be restricted to the subject matter searched [R.137(5)] unless it can be shown that the objection was not justified.
Describe the process of an incomplete search.
- If the Search Division decides it is impossible to carry out a meaningful search on the basis of some or all of the subject matter claimed, an invite to indicate within 2 months the subject matter to be searched will be sent [R.63]
- Cannot amend claims in response but can argue.
- If no reply is received or reply considered inadequate, Search Division will perform partial search if possible, or issue a reasoned declaration as to why no search is possible.
- During Examination, the claims must be restricted to the subject matter searched unless it can be shown that the objection was not justified.
Describe the process if the EPO considers that the application does not comply with unity requirements.
- If the EPO considers that the application does not comply with the unity requirements it will draw up a partial search report in relation to the invention first mentioned in the claims.
- The applicant will be invited to pay further search fee(s) within 2 months to get the remaining invention(s) searched.
- Subject matter which has not been searched must be removed from the application but can be pursued in a divisional application.
- If it is subsequently found that subject matter for which a further search has been carried out was unified then the further search fee will be refunded.
What is the extended European search report?
- The extended European search report (EESR) is prepared and sent to the applicant. It contains the European search report, the search opinion and a copy of any cited documents.
- If the Search Division considers that the European patent application does not comply with the requirement as to unity of invention, it will draw up a European search report on those parts of the application which relate to the invention first mentioned in the claims. For direct EP applications, it informs the applicant that if the search report is to cover the other inventions a further search fee must be paid for each invention concerned within the specified period. The opinion of the search division cannot be contested until the examination stage when it is then possible to submit arguments for unity to the Examiner.
What do the symbols in a European search report indicate?
- The main symbols used to indicate the relevance of documents:
- A - merely serves to show the technical background of the invention (i.e. not prejudicial to novelty or inventive step).
- X - of particular relevance to novelty or inventive step when the document is considered alone.
- Y - of particular relevance to inventive step when the document is considered in combination with one of the other documents cited in the search report.
- D - document cited in the specification.
- P - document published in the interval between the priority date and the filing date.
- Documents may be assigned one or more letter, e.g. a document can be both an A and D document.
What is the search opinion and when must it be responded to?
• The EPO issues a non-binding opinion at the same time as the search report (unless the applicant has requested examination before the search report has issued and waived his right to indicate whether or not he wishes to proceed with the application).
• The opinion is in effect a first examination report, which if negative must be responded to (for direct EP):
• within 6 months of the publication of the search report; or
• if a request for examination has been filed before the transmittal of the search report, within 6 months of an invite to respond, in which the applicant is also requested to indicate whether they wish to proceed further with the application.
• If no response is filed, the application is deemed withdrawn.
Further processing is available as a remedy.
What is the process regarding prior search results?
• Since 1 January 2011, applicants must provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe [R.141 / 70b]. The search results may also be provided within 2 months of an invite to do so under R.141(3).
• However, under R.141(2), applicant is exempt from this requirement if priority filing is from: Austria, Denmark, Spain (since 1 June 2016), Spain (since 1 June 2016), Switzerland (since 1 Aug 2019), China
(since 1 July 2021), Sweden (since 1 July 2021), Japan, Korea, the UK or the US, or if the EPO carried out the search.
• The R.141(2) list of exemptions will likely be expanded.
