EPA Dienststelle Wien 2004030330 Seminar Industrial Property Protection Prague, 2 June 2004 Patent Protection in Europe Arnold Heigl Head of Postgrant

EPA Dienststelle Wien

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Seminar Industrial Property ProtectionPrague, 2 June 2004

Patent Protection in Europe

Arnold Heigl

Head of Postgrant

Co-operation Programmes and INPADOC

European Patent Office

The European Patent OfficeThe EPO sub-office in Vienna

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Topics of this presentation

Introduction to the EPO

General issues

Filing

Search and examination

Granting

Opposition

Appeal

Summary


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The European Patent Organisation


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Further countries to join

Lithuania

Latvia

Iceland

Malta

Norway


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DG1Search, examination and administration ofsearch documentation

DG2Search, examination and opposition

DG3Boards of appeal

DG4General administration,finance, language servicepersonnelPatent information

DG5Patent law, internationalaffairs, PR, technicalco-operation


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The EPO’s Mission

To examine patent applications

To grant patents

To publish and disseminate patent information


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Applications 1995 to 2003

0

25 000

50 000

75 000

100 000

125 000

150 000

175 000

1995 1996 1997 1998 1999 2000 2001 2002 2003


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Published Patents

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15 000

30 000

45 000

60 000

75 000

1995 1996 1997 1998 1999 2000 2001 2002 2003


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General issues

Filing


Granting

Opposition

Appeal

Summary


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What is a patent?

A patent is a legal title granting its holder the exclusive right to make use of an invention for a limited area and time by stopping others from, among other things, making, using or selling it without authorisation.


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National procedures

Application

Application

Application

Invention CZ-Patent

AT-Patent

SE- Patent


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European procedure (EP)

Invention

Application up to 28national patents

European phase National Phase

EPOGrant


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International procedure (PCT)

Invention

Application180 member states

search and optionalpreliminary examination,no patent grant as such,entering the regional or national phase with 30 months delay after first filing


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Filing the application

Who can file?

Where to file?

Any natural or legal person, joint applicants

at EPO premises in Munich, The Hague and Berlin

at the central industrial property office or other competent authorities in that Contracting State (depending on the national law)


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For whichcountries?

In which language?

In countries where the EPC has entered into force = the contracting (designating) states

In one of the official languages (English, French, German)


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Items to file Request for grant of a European patent

Description of the invention

Claim(s)

Drawing(s) referred to the description or the claims

Abstract

Claim to priority


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Claim topriority

Priority may be claimed for a European patent application by a person who in 12 month prior to the filing of the European application has filed an application of a patent or registration of a utility model in respect of the same invention in a state which is party of the Paris Convention for the Protection of Industrial Property


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Requirements concerning the presentation of the invention

Disclosure of the invention

Unity of invention

Description:

indication of technical field of the invention

background state of the art

definition of the technical problem and its solution

description of the figures

description of the way to carry out the invention

indication of industrial application


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Requirements concerning the presentation of the invention

Claims:define the matter of protectionusually comprises two parts, the prior art portion and the characterising portion

Drawings: must correspond to description and claimsAbstract: summary of the invention for technical information purposes


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Online filing

Online filing of EP and PCT applications online filing functionality via epoline® Fee reduction for online filed applications as of 1 April 2004 (€125 to €90)


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Further detailed information via the EPO website

www.epo.org


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Examination on filing by the Receiving Section

indication that a European patent is sought

designation of at least one contracting state

definition of an applicant

description and at least one claim

payment of filing and search fees

Formalities examination

check of compliance with requirements concerning the items to file


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Search on basis of the claimssearch tools:

electronic databases (e.g. DOC d.b)paper collection, systematically filed according to the ECLA, containing PCT minimum documentationnon-patent literature

search reportpublished together with the publication of the application 18 months after the priority applicationor published separately


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Code letters in the search report indicating:

X particularly relevant document which, taken by itself destroys the novelty or inventive step of the subject-matter claimed

Y particularly relevant document which, taken together with one or more other „Y“ documents, indicates that the subject-matter claimed does not involve an inventive step

A document gives information about the state of the art


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Substantive examination

upon request for examination in written form

after payment of the examination fee

in the light of the search report, the EPO examines if the inventions is patentable and meets the requirements of the European Patent Convention (EPC)


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Granting

For an invention to be patentable it must be:

Novel (no prior disclosure or use) EPC Art. 54

Inventive (not obvious to one skilled in the art)EPC Art. 56

Industrially applicableEPC Art. 57


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Granting

Not regarded as inventions:Discoveries, scientific theories and mathematical methodsAesthetic creationsSchemes, rules and methods for performing mental acts, playing games or doing business, and programs for computersPresentations of informationTreatment of human or animal body by surgery or therapyPlant and animal varieties


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Granting

Novelty

Has the claimed invention been disclosed, used, exhibited before? If not it is NOVEL

Examiners use documentation and computer searches to decide on novelty.


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Granting

InventivenessDoes the claimed invention comprise an inventive step, attributes which are not obvious to someone skilled in the art?Test: can elements of the claimed invention be found in 2 prior art documents?If yes then the claimed invention is not inventive.


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Granting

Industrial Applicability

An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture

Difficult to assess


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Granting

65% Patents granted6.2 % opposed

10% Withdrawn after search report

25% rejected or withdrawn during examination


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Opposition

Any person (public)Opposition period: nine months after mention of publication of grantReasoned statement (grounds) In written (opposition form) with facts and evidencePayment of opposition feesSubstantive examination of the opposition by the opposition divisionOral proceedingsDecision of the opposition division


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Appeal

Anyone adversely affected by a decision of the EPO may file an appeal to the Board of Appeal

time limit two months after the date of notification of the respective decision

written statement (grounds)

last instance

case law


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General issues

Filing


Granting

Opposition

Appeal

Summary


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Fees

Application fee online filing € 90

Application fee Paper filing € 125

Search fee € 690

Designation fee € 75 per country, maximum 7 times

Examination fee € 1430

Fee for grant € 715

Annual fee 3+4 year € 785

Total up to grant € 4270

Opposition fee € 610

Fee for appeal € 1020


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13%

Overview of the patent procedure at the EPO

Formalities

Request for Examination

Examination

Application

Grant Patent

Reject

Opposition

within 9 months

Further or former applications

(Priority)

12 months

Info

InfoApplicant

EPO

Third Parties

Max. life time: 20 years

SearchPublication,

Search Report

max. 6 Months after search report

Translationsnational Phase

after18 months


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Thank you for your attention

Questions

Documents

EPA Dienststelle Wien 2004030330 Seminar Industrial Property Protection Prague, 2 June 2004 Patent Protection in Europe Arnold Heigl Head of Postgrant