Prosecution at the EPO

Question 1

Composition of the EPO

Answer 1

Receiving Section
Search Division
Examining Division
Legal Divisions

Question 2

How many Boards of Appeal does the EPO have?º

Answer 2

2 - Board of Appeal and Enlarged Board of Appeal

Question 3

Who can apply for a European Patent

Answer 3

Anyone. Don’t need to be a Paris Convention Country

Question 4

Requirements for a date of filling

Answer 4

Indication that a European Patent is sought
Information that identifies an applicant or that allows the applicant to be contacted
A description or reference to a previously filed application

Question 5

Where can an application be filed?

Answer 5

At the EPO (Munich, Hague or Berlin)
At the national office (which will forward within 6 weeks if not national security issue)

Question 6

What are the EPO languages?

Answer 6

English, German, French

Question 7

Where a description is not filed in English French or German, how long do you have to translate it to one of these languages?

Answer 7

2 months

Question 8

Who decides if a date of filling can be granted?

Answer 8

The receiving office

Question 9

How long do you have to file missing parts or to turn them in if notified

Answer 9

2 months

Question 10

What must a patent application at the EPO need?

Answer 10

Request for grant of a patent (Form 1001)
A description of the invention
One or more claims
Any drawings referred to in the description
An abstract

Must be filed or translated into EPO official languages

Question 11

Claims at the EPO

Answer 11

Charged after 15 claims
Define the subject matter for which protection is sought
Be clear and concise
Be supported by the description

Question 12

Designation fee

Answer 12

Used to have to designate all states, now automatically do so. Must pay it to get through.

Question 13

Requesting Priority

Answer 13

Should be done immediately but can be made up to 16 months from filing
Late declarations of priority are subject to due care standards

Question 14

Due care standard

Answer 14

If due care was taken and still happened, its a valid excuse. Very difficult standard to meet. If computer crashed, you should have had a backup, if you were sick, you should have had someone else do it…etc.

Question 15

Role of Receiving section

Answer 15

Giving a date of filing and checking it complies with formal requirements, which include:
Language
Date of filing
Application requirements
Mentioning the inventor
Payment of relevant fees
Applicant based in contracting state or has a representative of so. To apply you can do so from anywhere but to prosecute must have a physical person or representative there.

Question 16

Search division roles

Answer 16

Searches for prior art in parallel with the formalities division. Includes the PCT minimum search patent documentation.
May not occur if there is a lack of meaningful search objection - not worth it

May require supplementary searches at a cost if a unity or plurality objection is raised.

Question 17

Extended European Search

Answer 17

Includes a search report and an opinion on the patentability of the invention

Opinion is usually treated as the first examiner’s report on the application and it can include both substantive and formal objections to the application.

Can be useful to avoid examining worthless applications, and thus can be dropped early.

Question 18

Publication

Answer 18

At 18 months. Search report might be delayed, but they publish anyways at 18 months.

Question 19

When are rights conferred?

Answer 19

At publication, as long as the application is in english. If not, then must file translation of the claims at the IPO (or provided to an “infringer”) for rights to come into being.

Question 20

Third party observations

Answer 20

No pre-grant opposition at the EPO
Third party observations can be filed in writing in English, French or German

Question 21

Substantive examination

Answer 21

After search the next stage is substantive examination
Request filed within six months of the publications of the search report
Negative examination report can exchange observation and amendments like in the uk.

Rarely you can get different claims in different countries.

Can also pay for an accelerated prosecution.

Question 22

Voluntary amendment

Answer 22

Can amend at least once before the search report is issued with consent of examining division. Complying with rules of added matter

Question 23

London Agreement

Answer 23

Came into force 1 May 2008. Agreement that states that any country that has English, French and German as official language does not need to translate description or claims in their own language.

Question 24

Countries were no translation of claims or description is required

Answer 24

Because they have an EPO language as their official already: Belgium, France, Germany, Ireland, Lietchestein, Luxembourg, Monaco, Switzerland, UK

Question 25

Countries were English is prescribed

Answer 25

(Only english) Albania, Croatia. (English and National) Denmark, Finland, Hungaru, Iceland, Netherlands, Norway, Sweden

Question 26

When are renewal fees owed in relation to european patent application

Answer 26

Third and every subsequent calendar year calculated from the date of filing - Replaced on grant by national fees - There is both a grace period and restoration (due care standard)

Question 27

Re-instatement of rights

Answer 27

Can be done for things that kill the application.

Question 28

Timeline on re-establishment of rights at EPO

Answer 28

Up to 12 months if the cause of failed renewal persists. If the cause for lack of payment ceases, you have 2 months since the. E.g. you were sick, you stopped being sick. 2 months from that.

Question 29

Opposition timeline of European patent after grant

Answer 29

Have 9 months in which to oppose the patent

Question 30

Right to be heard

Answer 30

You can request oral proceedings if a decision is going to be made against you. This right is fundamental to the EPO in terms of conducting matters fairly and openly. If appealing to the enlarged board of appeal the facts of the case will be those already brought.

Question 31

Oral proceedings art

Answer 31

Art 116. a party has an unqualified right to be heard without needing to advance any justification for seeking a hearing.

Question 32

Main and auxilliary requests

Answer 32

In the oral proceedings EPO will look at first argument and then the following ones, proceeding as each is rejected.

Question 33

Types of proceeding in appeal

Answer 33

Opposition - By any person (except proprietor - avoiding falling out) held before opposition division Limitation - Limit patent (post grant ammendment) Revocation - Revoke the patent (all proprietors must agree)

Question 34

How many boards of appeal?

Answer 34

Many. Each for each technological division and a legal boards of appeal.

Question 35

Reformatio in peius

Answer 35

Appellant cannot be in a worse position because of an appeal than if there were no appeal.

Question 36

Board of Appeal referal to the Enlarged Board of Appeal

Answer 36

When a point of law of fundamental importance has arisen and to ensure the uniform application of the law.

Question 37

Petition for Review

Answer 37

In the case that a party is adversely affected by a Board of Appeal he may file for a review on the grounds of Bias, Procedural error, Failure to arrange, Incompetence. Very few petitions are successful