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Patent Application Procedures Patent Application Procedures inin
Europe Europe
by Dr. Ulla Allgayer Patent Attorney in Munich Germany
Europe – geographicalEurope – geographical
KRAMER BARSKE SCHMIDTCHEN
Europe – politicalEurope – political
KRAMER BARSKE SCHMIDTCHEN
Members of the EC
Candidates
Harmonization of the Patent law
KRAMER BARSKE SCHMIDTCHEN
Founding of a European Patent Organisation (EPO) in 1973 with the task to facilitate the granting procedure
Article 2 EPC:The European patent shall in each of the Contracting States for which it is granted, have the effect of … a national patent grantedby that state.
Europe – EPOEurope – EPO MembersMembers
KRAMER BARSKE SCHMIDTCHEN
• 30 Contracting States: (AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT,LU, MC, NL, PL, PT, RO, SE, SI, SK, TR)
• 5 Extension States: (AL, HR, LT, LV, MK)
KRAMER BARSKE SCHMIDTCHEN
Inventor´s rights (e.g. employee´s inventions) for not yet filed patents;
Applications by persons not having the right to the patent
National Regulations
Pre-administrative phase
Disputes are solved by national
authorities
Administrative Core Phase
Granting procedure; Oppositions
European Patent Convention (EPC) +Implementing Regulations
European Patent Office
(EPO)
Post-administrative phase
Nullity, Infringement, European Patent
as an object of property
National Regulations
Disputes are solved by national
authorities
KRAMER BARSKE SCHMIDTCHEN
Even though there are some „guidelines“ for the national courts how to interpret a European Patent in the post administrative phase,
only the administrative core phase is unitary.
Therefore:
Patents can be attacked most easily as long as they are inthe administrative core phase with effect for all contracting states;
Transfers, name changes etc. can be easily recorded in this phase;
After grant (opposition) the effect of any measures is only national.
Obtaining Patent Protection in EuropeObtaining Patent Protection in Europe
International (PCT) Application
• designating EP (selection of EP contracting states not neccessary)
• designating one or more European countries (designation of BE, CY, FR, GR, IE, IT, MC, NL, SI leads to EP application)
National Patent Application
• selection of states in which protection is sought upon filing
EP Application
• selection of EP contracting states in which protection is sought not neccessary upon filing
NATIONAL (INDEPENDENT) PATENTS
KRAMER BARSKE SCHMIDTCHEN
The way to get a EP PatentThe way to get a EP PatentFiling date Language: EN, DE, FR
• Claiming priority
Priority of a previous application can only be claimed once ???
For
ma
l Exa
min
atio
n
Sea
rch
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
The way to get a EP PatentThe way to get a EP PatentFiling date
Language: EN, DE, FR
• Claiming priority
Priority of a previous application can only be claimed once ???
•Search request (accelerated search possible, PACE program)
• Fees: Filing fee, Search fee, Claim fees (for claims more than 10)
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
The way to get a EP PatentThe way to get a EP PatentFiling date(claiming priority)
Publication of the Application (electronically as A1, A2)
Publication of the European Search Report (together with application (A1) or separately (A3))
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
18
mo
nth
s a
fte
r p
riorit
y
Ap
pro
x. 1
ye
ar
aft
er
filin
g f
or
ap
plic
atio
ns
with
prio
rity
cla
im
Formal Examination
Search Stage European Search Report
Within 6 months after publication of the Search Report:• Designation of contracting states (max. 7 designation fees)• Request for substantive Examination (fee for examination request; accelerated Examination possible, PACE)
BEST, EESR
KRAMER BARSKE SCHMIDTCHEN
KRAMER BARSKE SCHMIDTCHEN
When can amendments be filed? Rule 86 EPC:(1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided.
(2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings.
(3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication.
No further amendment may be made without the consent of the Examining Division.
Filing Date ESRExaminationRequest
1st OfficeAction …further Office Action(s)
R 86(1):No preliminaryamendments
R 86(2): amendments possible
R 86(3):One amendment
R 86(3):Amendments only with consent
response
The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)
Office Action(s), Response(s):
Examination as to unity, clarity, novelty, inventive step …
Relevant prior art:
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
1st
Off
ice
Act
ion
abo
ut 0
.5-1
yea
r af
ter
ente
ring
exam
inat
ion
sta
ge
• all publications prior to the priority date of the application, independent of their nature (written, orally, use)
• with respect to novelty additionally all EP applications having a relevant date before the relevant date (filing date or priority date) of the respective application but published afterwards and designating the same states
KRAMER BARSKE SCHMIDTCHEN
The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)
Office Action(s), Response(s):
Examination as to unity, clarity, novelty, inventive step …
Possibly amendments
Strict handling of requirement of original disclosure
Informal Interwiew with the Examiner
Personally or by phone
Oral proceedings
Third party observations possible
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
1st
Off
ice
Act
ion
abo
ut 0
.5-1
yea
r af
ter
ente
ring
exam
inat
ion
sta
ge
KRAMER BARSKE SCHMIDTCHEN
Problem solution approach for asessment of inventive step:
1. Identification of the „closest prior art“
2. Identification of the differing features
3. Determination of the objective problem solved by these features
4. Definition of the objective object
5. Could-would approach:
Is there a document suggesting the missing features? (Can the skilledperson combine these documents and arrive at the claimed solution?)
Is there any motivation for the skilled person combining these documents? (Would the skilled person combine these documents)
European Claim draftingEuropean Claim drafting
• Multiple dependent claims are allowed and favorable (count as 1 claim)
• Only one independent claim of same category (apparatus, method, use)
• two part form, reference numbers
KRAMER BARSKE SCHMIDTCHEN
The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)Office Action(s), Response
Communication under R. 51(4) EPC
• Applicant is informed of proposed text for grant
Approval/Disapproval within usually 4 months:
• filing translation of claims in two EPC languages
• fee for grant
Grant of a European Patent; mentioned in European Patent Bulletin
Fili
ng o
f d
ivis
ion
al a
pplic
atio
ns p
ossi
ble
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
KRAMER BARSKE SCHMIDTCHEN
If application is refused:
Possibility of appeal
Appeals are handled by the EPO Boards of Appeal
They are independent within the EPO
Two technically qualified members One legally qualified member
The way to get a EP Patent (ctnd.)The way to get a EP Patent (ctnd.)
Validation of the patent in one or more designated states
translation of the patent specification
• publication fee
Grant of a European Patent; mentioned in European Patent Bulletin
IT
DE GB
CH…
PT
BE
GB
DEFI HU
…
SK
FRNL
KRAMER BARSKE SCHMIDTCHEN
OppositionOppositionFiling of an Opposition within 9 months after mention of grant (about 6%-10% of granted EP-patents):
• two instances (Opposition division of EPO, Boards of Appeal)
• can be filed by anybody; opponent position is not transferable
• 1,5 to 2,5 years per instance
• revocation/maintenance valid for all states
• plural oppositions by different parties are commonly trated
•Third party observations possible
IT
DE GB
CH…
PT
KRAMER BARSKE SCHMIDTCHEN
Grounds for opposition:
The subject matter of the European patent is not patentableThe invention is not disclosed in a manner sufficiently clearSubject matter extends beyond content of application as originally filed
KRAMER BARSKE SCHMIDTCHEN
Trap situation:
Amendment during substantive examination
This amendment turns out not to be sufficiently supported by original disclosure
It cannot be kept in the claims, because this would contravene the requirement that the application must not comprise subject matterextending beyond the content of the application as originally filed
It cannot be removed from the claims, because this would broaden the scope of the claims
Revocation of the patent !!!
OppositionOppositionOpposition proceedings end
IT
DE GB
CH…
PT
BE
GB
DE
FI HU
…
SK
FRNL
• payment of annuities
• nullity suits
• infringement suits
• ….
KRAMER BARSKE SCHMIDTCHEN
KRAMER BARSKE SCHMIDTCHEN
PriorityPriority
Can a priority of an application validly be claimed more than once for EP patent applications?
26. March 1987
19. June 1987
02. March 1988
FR 1
FR 2
EP 1: claim1, claim2, description
EP 2: claim2, description
03. March 1988
KRAMER BARSKE SCHMIDTCHEN
PriorityPriority
Can a priority of an application validly be claimed more than once for EP patent applications?
26. March 1987
19. June 1987
02. March 1988
FR 1
FR 2
EP 1: claim1, claim2, description
EP 2: claim2, description
03. March 1988
If priority claim is invalid: EP1 is novelty destroying for EP2 (Art. 54(2) EPC)
KRAMER BARSKE SCHMIDTCHEN
T 998/99 L´Oréal:
EP2 was considered not claiming validly priority of FR1
Article 87(1) EPC does not permit to claim the same priority when applying in an identical country for several applications concerning the same invention.
EP2 received filing date as valid date
EP1 was novelty destroying for EP2
KRAMER BARSKE SCHMIDTCHEN
SoulutionSoulution
26. March 1987
19. June 1987
FR 1
FR 2
EP 1: claim1, claim2, description
EP 2: claim2, description
EP: claim1, claim2, description
26. March 1988 Divisional Applications
KRAMER BARSKE SCHMIDTCHEN
Embodiment 1Embodiment 2Embodiment 3
Embodiment 1Embodiment 2Embodiment 6
Embodiment 1Embodiment 2
Embodiment 2Embodiment 4Embodiment 5
Embodiment 1Embodiment 3
Embodiment 4
Embodiment 1Embodiment 3Embodiment 6
KRAMER BARSKE SCHMIDTCHEN
Embodiment 1Embodiment 2Embodiment 3
Embodiment 1Embodiment 2Embodiment 6
Embodiment 1Embodiment 2Embodiment 3Embodiment 6
Embodiment 2Embodiment 4Embodiment 5
Embodiment 1Embodiment 3
Embodiment 4
Embodiment 1Embodiment 3Embodiment 6
Embodiment 1Embodiment 2
KRAMER BARSKE SCHMIDTCHEN
Former situation:
EPO The Hague (NL) EPO Munich (DE)
Formal Examination
Search Substantive Examination
Oppositions
Appeals
Enlarged Board of Appeal
BEST and EESR
KRAMER BARSKE SCHMIDTCHEN
Bring Examination and Search Together (BEST)
EPO The Hague (NL) EPO Munich (DE)
Formal Examination
Search Substantive Examination
X EP 9999999
Y US 9877987
Y CH 87765677
….
Term
Art. 52, 54 …
KRAMER BARSKE SCHMIDTCHEN
When can amendments be filed? Rule 86 EPC:(1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided.
(2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings.
(3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication.
No further amendment may be made without the consent of the Examining Division.
Filing Date ESRExaminationRequest
1st OfficeAction …further Office Action(s)
R 86(1):No preliminaryamendments
R 86(2): amendments possible
R 86(3):One amendment
R 86(3):Amendments only with consent
response
KRAMER BARSKE SCHMIDTCHEN
Extended European Search Report (1.July 2005):R44a EPC(1)The European Search Report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of this Convention, unless a Communication under Rule 51, paragraph 2 or paragraph 4, can be issued.
(2) The opinion under paragraph 1 shall not be published together with the search report.
Filing Date EESRExaminationRequest
1st OfficeAction …further Office Action(s)
R 86(1):No preliminaryamendments
R 86(2): amendments possible
R 86(3):One amendment
R 86(3):Amendments only with consent
response
EESR = ESR + „written opinion“(Content of 1st Office Action)
Art. 52, 54 …
X EP 9999999
Y US 9877987
Y CH 87765677
….