Prosecution at the EPO Flashcards
Composition of the EPO
Receiving Section
Search Division
Examining Division
Legal Divisions
How many Boards of Appeal does the EPO have?º
2 - Board of Appeal and Enlarged Board of Appeal
Who can apply for a European Patent
Anyone. Don’t need to be a Paris Convention Country
Requirements for a date of filling
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
Where can an application be filed?
At the EPO (Munich, Hague or Berlin)
At the national office (which will forward within 6 weeks if not national security issue)
What are the EPO languages?
English, German, French
Where a description is not filed in English French or German, how long do you have to translate it to one of these languages?
2 months
Who decides if a date of filling can be granted?
The receiving office
How long do you have to file missing parts or to turn them in if notified
2 months
What must a patent application at the EPO need?
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
Claims at the EPO
Charged after 15 claims
Define the subject matter for which protection is sought
Be clear and concise
Be supported by the description
Designation fee
Used to have to designate all states, now automatically do so. Must pay it to get through.
Requesting Priority
Should be done immediately but can be made up to 16 months from filing
Late declarations of priority are subject to due care standards
Due care standard
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.
Role of Receiving section
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.
Search division roles
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.
Extended European Search
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.
Publication
At 18 months. Search report might be delayed, but they publish anyways at 18 months.
When are rights conferred?
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.
Third party observations
No pre-grant opposition at the EPO
Third party observations can be filed in writing in English, French or German
Substantive examination
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.
Voluntary amendment
Can amend at least once before the search report is issued with consent of examining division. Complying with rules of added matter
London Agreement
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.
Countries were no translation of claims or description is required
Because they have an EPO language as their official already: Belgium, France, Germany, Ireland, Lietchestein, Luxembourg, Monaco, Switzerland, UK
Countries were English is prescribed
(Only english) Albania, Croatia. (English and National) Denmark, Finland, Hungaru, Iceland, Netherlands, Norway, Sweden
When are renewal fees owed in relation to european patent application
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)
Re-instatement of rights
Can be done for things that kill the application.
Timeline on re-establishment of rights at EPO
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.
Opposition timeline of European patent after grant
Have 9 months in which to oppose the patent
Right to be heard
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.
Oral proceedings art
Art 116. a party has an unqualified right to be heard without needing to advance any justification for seeking a hearing.
Main and auxilliary requests
In the oral proceedings EPO will look at first argument and then the following ones, proceeding as each is rejected.
Types of proceeding in appeal
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)
How many boards of appeal?
Many. Each for each technological division and a legal boards of appeal.
Reformatio in peius
Appellant cannot be in a worse position because of an appeal than if there were no appeal.
Board of Appeal referal to the Enlarged Board of Appeal
When a point of law of fundamental importance has arisen and to ensure the uniform application of the law.
Petition for Review
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
