Unit 4 - EP Flashcards
What are the minimum requirements for obtaining a filing date on a European patent application?
- Indication that a patent is sought
- Details of Applicant
- Description or reference to earlier application
What are the requirements for a representative on a European patent application?
- Must be a European Professional Representative
- Representative must be identified on Request for Grant Form
What deadlines are set by publication of the European Search Report?
- Pay designation/examination fees
- Confirm if any extension/validation are designated & pay fees
- Respond to objections in search opinion (Written Opinion)
- Confirm intention to proceed to examination (if examination fee already paid)
What are the types of EP patent?
- Direct filing (Non-Convention, Convention)
- Convention ex-PCT (EURO-PCT)
- Non-convention ex-PCT (EURO-PCT)
- Divisional
What is the deadline for filing direct EP filing?
- 12 months from earliest priority date
What is the deadline for filing EURO- PCT application?
- 31 months from earliest priority date of priority/filing date on PCT application
What is the deadline for filing Designation of Inventor? (GB)
- 16 months from earliest priority date (priority filed)
- 16 months from filing date (no priority)
What is the deadline for filing priority claim (Direct EP)
- On Form 1001
- within 16 months of earliest priority date being claimed
However EP application must have been filed within 12 months of earlier priority date
When is the certified copy of priority document due? (EP Direct)
16 months from earliest priority date claimed
Not needed if priority claimed from application first filed in CN, JP, KR, US, EP or PCT filed at EPO
What are the 3 official languages of the EPO
English, French and German
If specification is not in EPO official language, what is the deadline for filing translation?
2 months from filing date
If missed EPO issue invitation to file with further 2 month deadline
What are the fees due on filing or 1 month from filing date? (EP)
- Filing fee
- Search fee
Where can you file an EP patent application?
- EPO Office (Munich, The Hague or Berlin)
- National Office (e.g. UKIPO)
- Divisional application can only be filed at EPO
If invention relates to national security and inventor is resident in UK, what would you do?
Either
- File first application (priority) in UK
or
- Apply to UKIPO to obtain foreign filing licence
How to file EP patent application?
- By hand
- Online
- EPO online software
- EPO web form filing
- EPO case management system - Post
- Fax
- Courier
How to pay fees at EPO?
- Bank transfer
- Deposit Account
- By account set up with EPO
What actions are due for filing request for further processing and by when?
- Request further processing by paying further processing fee
- Complete action that was missed
Deadline - 2 months from Noting of Loss of Rights communication (10 day rule apply)
Fees -
Further processing fee - fixed amount
If missed action is fee - 50% of missed fee
What actions are due for responding to Rule 161/162 communication and by when?
- Pay excess claims fees over 16
- If ISA is EPO - file response to written opinion
- Optional voluntary amendments (description, claims & drawings)
Deadline - 6 months from notification of Rule 161 communication (non-extendible & 10 day rule apply)
When is further search fees due on EP patent (if required)?
2 months from notification of partial search report (10 day rule apply)
What is deadline for responding to EESR? (EP Direct)
6 months from publication of search report (EESR) - no 10 day rule
What is the deadline for responding to EESR and what actions? (EURO-PCT)
6 months from notification of a subsequent communication (10 day apply)
- Confirming intention to proceed with application
- Respond to Written Opinion
What is an A1 spec on EP?
Publication of specification & European Search Report
What is an A2 spec on EP?
Publication of specification without European Search Report
What is an A3 spec on EP?
Publication of European Search Report only
When is the designation fee due on EP Direct filing?
6 months from publication of European Search Report
What is deadline for responding to Examination Report? (EP)
Usually 4 months from date of communication, sometimes 2 months
- Extendible by up to 6 months
What deadlines are set by a summons to oral proceedings?
- Date of Oral Proceedings
- Written Submissions due usually 1 or 2 months before date of oral proceedings
- No 10 day rule applies
What deadlines are set by Decision to Refuse?
- File Notice of Appeal & pay appeal fee due 2 months from notification of Decision to Refuse (10 day rule apply)
- File Grounds of Appeal due 4 months from notification of Decision to Refuse (10 day rule apply)
What deadlines are set by Rule 71(3) communication?
- Approve/disapprove text and drawings proposed for grant
- Confirm accuracy of bibliographic information
- Pay fees (grant and printing)
- File translation of claims into other official languages of EPO
- Pay any outstanding claims fees over 15
Deadline - 4 months from notification of Rule 71(3) communication (Non-extendible & 10 day rule apply)
When is a divisional application due? (EP)
Grant date minus 1 day
When must the validation process be complete?
3 months from date of grant but could be different for each country
How long does an EP patent last?
20 years from date of filing
When are renewal fees payable to EPO? (EP)
- Before grant until patent is granted
- Paid once a year at end of month containing anniversary of filing date
- Payable from 2nd anniversary of filing date for 3rd year renewal fee onwards
- Payable up to 6 months late with surcharge
When can a EP patent be opposed and what actions are due?
9 months from grant date (non-extendible)
- File Notice of Opposition & Grounds of Opposition
