The European Patent Granting Procedure Domenico Golzio European Patent Office dgolzio@epo.org Cyberlaw Torino Tecnologie digitali e diritto nell’era della Rete 12 - 13 Luglio 2004 Fondazione Giovanni Agnelli - Torino

Domenico Golzio Italian Degree in Physics 11 years Telecom, Car, Aerospace Industry 25 Technical Papers 3 Patents 1990 European Patent Office – Munich 1997 European Patent Office – The Hague Patent Examiner: Search - Examination - Opposition 2002 Co-ordinator International Co-operation Name and curriculum of the speaker

The Inventing Process I have an idea!!! How can I protect it?

Intellectual property Rights (IPRs) Patent Registered Design Trade Mark Copyright

A contract between an inventor and a state What is a Patent? A contract between an inventor and a state Inventor Protection for about 20 years Exclusive rights to produce, use, sell and import the invention to recoup investment in R&D to strengthen market position and competitiveness State Publication of the invention to spread new technical knowledge to avoid R&D duplication to foster innovation Patents are granted to inventions which are Novel, Inventive (non obvious), suitable for Industrial Application when considered against the Prior Art

Patent Rights Exclusive right: nobody can produce, use, sell or import your invention (patent infringement) Territorial right: a patent in one state does not affect patent in other states Timed right: protection from a certain date to another date Transferable right: you can assign or sell (license) your own patent/patent application to others One-Time right: when a patented product is put on the market the patent right is exhausted Passive right: prevents others to exploit your invention, does not guarantee that you will exploit it

Patent Protection A) National Patent Application B) International Patent Application PCT C) European Patent Application

Patent Protection National Patent Application one application for one state one procedure for each state one patent for one state

Patent Protection International Patent Application PCT one application for up to 115 PCT member States International Search Report and International Preliminary Examination Report EPC states can be collectively designated as a region

Patent Protection European Patent Application one application filed at one Office for “N” contracting states one procedure for all “N” states one EP patent for all “N” states Cost –Effective (costs less than 3 national patents)

European Patent Convention 28 Member States Netherlands Hungary Belgium Sweden Switzerland Austria Romania United Kingdom Liechtenstein Bulgaria Germany Turkey Ireland Cyprus Poland Portugal Italy Denmark Finland Estonia France Monaco Spain Greece Slovakia Czech Republic Slovenia Luxembourg

The Actors of the Patent Granting Procedure Inventor/Applicant Representative European Patent Office (EPO) publishes Unexamined Patent Applications (A) Contract Proposal Granted Patents (B) Final Contract

Articles Rules Case Law European Patent Convention ‘EPC’ * Guidelines * Internal Instructions Search Examination Case Law The Blue Book EPC Articles: only changed by diplomatic conference (November 2000; March (?) 2002) adaptations needed for: International agreements (e.g. TRIPPS) BEST (site independent Search & Examination) Business Methods * Bio Technology * Software Claims * * e.g. US patents are possible, meaning unequal competition for EU and US industries Rules: adapted by Administrative Council Case Law: ‘daily’ follow up by court decisions Legal texts need interpretation: Guidelines Internal Technical Notes on Search & Examination *

... set patent protection standards which responds to the needs of the system’s users ... support innovation, competitiveness and economic growth for the benefit of the citizens of Europe. To implement the EPC: “the strategic direction for the EPO” *

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

Representative Professional representative Art 134 EPC National of a Contracting State With his place of business in a Contracting State Who has passed the European Qualifying examination

Where can the inventor file? Art 75(1) EPC EPO Munich EPO The Hague EPO Berlin Sub-Office Patent Office of Contracting State If national law permits All Contracting States except NL

What languages can he file in? Art 14(1)EPC: EPO official languages Art 14(2) EPC: non-EPO language language of Contracting State His own language Language of his state of residence With translation within 3 months of filing date

Contents of a European Patent Application Art 78(1) EPC Request for grant Description of the invention Disclosure of prior art Detailed description Claims Drawings Abstract

Receiving Section Receives application and carries out first treatment of file Examination on filing Art 90 EPC Examination as to formal requirements Art 91 EPC Treatment of subsequently filed documents

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

What is the aim of the Search? To find the most relevant State of the Art The State of the Art is all information, relevant to the patentability, made available to the public (in writing or orally) prior to the date of filing of the patent application Art 54(2) EPC

Where do we search? The EPO Database EPODOC which contains over 30 million prior art patent documents Other databases (WPI, PAJ, INSPEC etc.) and the Internet may also need to be consulted

SEARCH: is it Hopeless? ENORMOUS TASK!!! HELP! I have read 2 Million documents and I still haven‘t found anything relevant! ENORMOUS TASK!!! HELP!

Documentation to the rescue! Every prior art document in the EPODOC database is classified according to its content Based on its class a patent or non-patent document is physically stored in a corresponding classification unit

Thank Heavens I only need to search few classes! SEARCH: it is possible! Only documents in relevant classification units need to be searched Thank Heavens I only need to search few classes! I‘ve got it!

How are the classification units organized? In the past, paper documents were stored in special cabinets according to their classification 9400 new subclasses introduced in 2000 and 100 000 documents re-classified. But with 130000 defined classes.....

Organization of classified documents Electronic storage of documents is essential In the year 2003 EPO documentation consisted of: 32,1 million published patent documents 4,6 million technical articles Access to 50 million abstracts of articles Accessible for free via esp@cenet !!!

Who carries out the search? Examiners Carry out the search Art 92 EPC Classify the documents

Search Report Art 92 EPC - Rule 44 EPC A search report is drafted listing the state of the art documents: Publication Data (applicant, publication date) A letter code (X,Y,A) which identifies the degree of relevance An indication of the most relevant parts of the documents International Classification (IPC) of the application

Search Report No communication between Search Division and Applicant Applicant cannot amend content of description, claims or drawings before the Search Report R.86(1) EPC Search Report is sent to applicant with copies of cited documents Art. 92(2) EPC

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

Publication of a Patent Application All European Patent applications are published as soon as possible after the expiry of a period of 18 months after priority Art. 93(1) EPC Applicant can request early publication Art. 93(1) EPC Publication in language of Proceedings Art. 14(6) EPC

Publication Contents Art. 93(2) EPC Front page with: Bibliographical data of Application Publication Date IPC Classification Designated States Title R.33(1) EPC Abstract R.33, R.47 EPC Main Drawing(s) R.33(4)EPC Description Claims Drawings Search Report if available Art. 93(2) EPC

Publication Types A1 Publication A2 Publication Front Page + Application + Search Report A2 Publication Front Page + Application (No Search Report) A3 Publication (only after A2) Front Page + Search Report

Publication of Patent Application -vs- Granted Patent Publication of the Patent Application is not the final Patent The granted Patent is published after the Examination and Grant Procedure (publication type B1)

Publication of Application Legal implications Application contents become part of the state of the art Art 54(2) EPC Provisional Protection Art 67, Art 69 EPC Third Party Observations Art 115 EPC Application data entered in public EP Register Art 127 EPC Application file open for public inspection Art 128(4) EPC free file inspection via epoline !!!

Publication of Search Report Legal implications Triggers 6-month time limit for payment of designation fees Art 79(2) EPC Triggers 6-month time limit for filing the Request for Examination Art 94(2) EPC

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

Overview The examination division The claims Patentability Refusal or Grant

Examining Division Art 18 EPC Examining Division consists of three examiners: - 1st Member, 2nd Member and Chairman - 1st Member corresponds with the Applicant - Examining Division decide together whether to grant or refuse the application

Substantive Examination Procedure Art 96(2) EPC Examining Division Appointed Request for examination 1st Examiner Applicant Intention to grant B Examining Division Decision to refuse B

The Claims Art 69 EPC They define the scope or extent of the protection of the patent But the description and drawings are used to interpret claims They are the most important part of the application for the Examining Division The claims use words to set up a fence around the invention. Words are an imperfect tool when it comes to defining inventions which gives rise to not only clarity problems but difficulty in excluding the prior art. The prior art must be outside the fence. Of course, under the EPC the scope of protection offered by the granted patent is not limited to the claims (Art. 69 EPC).

Introduction to Patentability What are the main requirements for granting a patent application? Novelty Art 54 EPC Inventive Step Art 56 EPC Industrial Applicability Art 57 EPC Problem Solution Aproach used to assess Inventive step

The Grant Art 97(2) EPC At least two members of the Examining Division agree that the application meets the requirements of the European Patent Convention

Refusal Art. 97(1) EPC If the Examining Division is considering refusing the application The Applicant has the right to be heard He can ask to present his arguments face to face in Oral Proceedings Art 116 EPC before the division If at least two members of the Examining Division are still not convinced the application is refused “Right to be heard” is a fundamental legal principle i.e. a principle of natural justice. Refusal explains in detail why the application does not meet the requirements of the EPC. Refusal is an appealable decision.

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

Grant Rule 51(4) EPC Approval of the final text Fees for grant and printing File translation of claims in the other two official languages

Entry into the “National” Phase Filing of translation of the patent specification Appointment of a representative Payment of “special” fee Payment of “national” renewal fees Registering a transfer, licenses and other rights

The European Patent Granting Procedure Filing Search Publication Examination Grant Opposition

A Brief Introduction to Opposition Overview What is it? Opposition Division Revocation or Maintenance Advantages

Definitions Opposition is a centralized EPO procedure for challenging the validity of a granted European Patent Art. 99 EPC It must be filed within 9 months of the mention of grant being published It can be filed by any person Opposition is a separate procedure to examination. In 2000 only 5% of granted European Patents were opposed.

Why do we need opposition? It allows the introduction of disclosures which may not have been available to the Examining Division Oral disclosures Prior use Proprietary disclosures e.g. manuals It also allows the public to challenge the Examining Division’s assessment of patentability (e.g. Greenpeace opposition to the ‘Edinburgh Patent’ in 2000) Perhaps refer to Greenpeace’s opposition to the human being patent. Check case.

How does it work? Oppositions proceedings are adversarial: - the patent proprietor and the opponent battle it out amongst themselves - the Opposition Division arbitrates and takes the final decision This fight involves them making written and ultimately oral submission to the Opposition Division. Each party is given the opportunity to comment on the other’s submissions.

Opposition Opponent Proprietor

Opposition Division 3 members At least 2 of whom did not take part in the Examination Proceedings Usually first examiner from Examining Division plus two others

The Opposition Procedure Art 101(2) EPC Decision Opposition Division Opposition Opposition Counter- arguments and/or amendments Counter- arguments and/or amendments Opponent Proprietor

Possible Decisions Revoke the patent in its entirety: Patent no longer exists Maintain the patent in amended form: Claims are restricted Maintain the patent in unamended form: Claims maintained as granted Revocation has an ex tunc effect

Advantages of Opposition Patent is revoked for all designated states Cheap compared to proceedings before national courts (613 Euros) Possibility of appeal Use of a ‘straw man’ is allowed 2000 oppositions filed in year 2000 only 5.7% of granted patents opposed

Opposition Summary Centralized procedure for challenging a granted EP patent Allows introduction of disclosures not available to examining division Much cheaper than national revocation proceedings Revocation for all designated states

Appeal Filing Search Boards of Appeal Publication Grant Opposition Examination Grant Opposition

Boards of Appeal Legal Board Technical Board Appeals relating to legal matters e.g. refund of fees Technical Board Technical matters in examination e.g. refusal for lack of novelty

Appeal Procedure Art. 106-111EPC From decisions of Receiving section Examining division Opposition division Any party adversely affected Examination of Appeal Suspensive effect Decision

Decisions in Respect of Appeal First instance decision upheld First instance decision rectified Possible remittal to first instance with instructions

Enlarged Board of Appeal Art 112 EPC Important legal questions from Boards of Appeal During appeal proceedings Points of law referred by President Conflicting decisions given by different Boards of Appeal Not a further instance

Costs for an EP (average) (01.06.2001) ( 8 states; duration of 10 years) EPO EUR 4.300 Filing EUR 800 S&E EUR 2.400 Grant EUR 1.100 % of total 13 % Translations in contracting states EUR 11.800 % of total 38 % Total Costs EUR 31.100 Professional Representation EUR 6.100 % of total 20 % Yearly Taxes EUR 8.500 % of total 29 %

If you have further question, please consult www.epo.org or write to dgolzio@epo.org Thank you!!