Patent Protection in Europe

Patent Protection in Europe
Arnold Heigl Head of Postgrant Co-operation Programmes and INPADOC European Patent Office

Topics of this presentation
Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

The European Patent Organisation

Further countries to join
Lithuania Malta Iceland Latvia Norway

Two bodies of the EPO

DG2 Search, examination and opposition
DG1 Search, examination and administration of search documentation DG2 Search, examination and opposition DG3 Boards of appeal DG4 General administration, finance, language service personnel Patent information DG1 and DG2: responsible for search and examination DG1 additionally administration of the search documentation, DG2 additionally for opposition. DG3: Boards of appeal = technical board of appeal + enlarged board of appeal Composition of the board: two technical + one legal, enlarged board: three technical two legal members - The Boards of Appeal are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions, Opposition Divisions and of the Legal Division The enlarged board of appeal is deciding points of law referred to it by Boards of Appeal and gives opinions on points of law referred to it by the President of the European Patent Office ensuring uniform application of the law, or if an important point of law arises DG5: PR = public relation DG5 Patent law, international affairs, PR, technical co-operation

The EPO’s Mission To examine patent applications To grant patents
To publish and disseminate patent information

Applications 1995 to 2003 27 member states for the time being
Last seven ones which have joined: on 1 July 2002: Bulgaria, Czech Republic, Estonia, Slovak Republic on 1 December: Slovenia on 1 January: Hungary on 1 March: Romania

Published Patents

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. territorial aspect temporal aspect

National procedures Invention CZ-Patent Application AT-Patent
SE- Patent Application

European procedure (EP)
Invention Application up to 28 national patents EPO Grant European phase National Phase 20 20 19 22

International procedure (PCT)
Invention Application 180 member states search and optional preliminary examination, no patent grant as such, entering the regional or national phase with 30 months delay after first filing

Filing the application
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) Who can file? Where to file? who: if applicant has his residence or principal place of business in one of the contracting states he may act on his own behalf if residence/principal place of business outside the contracting states, representation by professional representative (European patent attorney)

For which countries? 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) Extension is possible to extension countries (Albania, Latvia, Lithuania, Fromer Yugoslav Republic of Macedonia, Romania) Language: the language chosen becomes the language of the proceedings Residents of member states having a language other than EN, FR or DE or residents from outside the member states may file in an official language of this state but have to submit translation within 3 months after filing or within 13 months after earliest priority

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 Request for grant must be filed on an EPO form European patent applications must designate the inventor (separate form if the applicant is not the inventor or not the sole inventor) Designation of inventor may be filed within 16 months after date of filing or date of earliest publication Requirements concerning presentation of specific items will follow later

Claim to priority 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 Example: filing of a national Estonian patent, within 12 months possibility to file a European patent. This means time to decide and to check the market. To claim priority the applicant must indicate in the respective form: State Date of filing File number of the previous application Certificate issued by the authority which received the application Advantage: priority date will count as the date of filing for the European patent application Paris Convention: established in 1883 to constitute a Union for the protection of industrial property

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 Disclosure: Invention must be disclosed in a sufficiently clear and complete way to be carried out by a person skilled in the art. Description and drawings are used to interpret the claims. After the filing, no amendments are allowed which might extend the content of the application originally filed. Unity: application must relate to a single invention or a group of inventions so linked as to form a single general inventive step.

Requirements concerning the presentation of the invention Claims: define the matter of protection usually comprises two parts, the prior art portion and the characterising portion Drawings: must correspond to description and claims Abstract: summary of the invention for technical information purposes Two parts of the claim: prior art part: designation of the subject matter of the invention and the necessary technical features to define it, but which are part of the prior art characterising part: designation of technical features which, in combination with features in the first part of the claim, are desired to protect Claims have to be clear, i. e. terminology used should not leave any doubt as to meaning and scope of the claim

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

Further detailed information via the EPO website
Further information concerning filing can be found on the EPO website.

The latest version of such information documents are accessable via the website of the EPO.

Search and examination
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 Receiving section examines whether the application filed satisfies the requirements for the accordance of a date of filing if yes, the application receives a date of filing Formalities examination: - Form for request for grant of a European patent: filled and signed - Description of the invention - Claim(s) - Drawing(s) referred to the description or the claims - Abstract - Claim to priority 4

on basis of the claims search tools: electronic databases (e.g. DOC d.b) paper collection, systematically filed according to the ECLA, containing PCT minimum documentation non-patent literature search report published together with the publication of the application 18 months after the priority application or published separately The search is carried out for the purpose of discovering the state of the art which is relevant for the purpose of determining whether, and if so to what extent, the claimed invention is novel (Art.54 & Art.33(2) PCT) and inventive (Art.56 & Art.33(3) PCT) Search report is drawn up on the basis of the claims with due regard to descriptions and drawings Documents available to the EPO at the time of drawing up the report are taken into consideration Search report: 6 months after the publication of the search report to the applicant, he must file the request for substantive examination. 4

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 4

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) Request for examination must be filed within 6 months after the date of publication of the European search report mentioned in the European Patent Bulletin one month period of grace for filing the request and/or payment Examination division: 3 technical members (+1 legal) (informal) Interviews in case of minor objections between applicant/representative and examiner Oral proceeding in case of major objections between examining division and applicant/representative, result of oral proceedings: decision The applicant may need to restrict his claims to take consideration of the state of the art. 4

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 applicable EPC Art. 57

Granting Not regarded as inventions:
Discoveries, scientific theories and mathematical methods Aesthetic creations Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers Presentations of information Treatment of human or animal body by surgery or therapy Plant and animal varieties Prohibited matters: Patent application must not contain statements or matters contrary to public order or morality

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.

Granting Inventiveness
Does 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.

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

Granting 10% Withdrawn after search report 65% Patents granted
6.2 % opposed one third of European patent application does not survive until grant After the grant, the European patent enters the national phase Any contracting state may prescribe translation of the European patent specification not granted in one of its official languages to put the patent into force in the respective country 25% rejected or withdrawn during examination

Opposition Any person (public)
Opposition period: nine months after mention of publication of grant Reasoned statement (grounds) In written (opposition form) with facts and evidence Payment of opposition fees Substantive examination of the opposition by the opposition division Oral proceedings Decision of the opposition division Opposition can only be filed on the following grounds: subject matter of the patent is not patentable European patent does not disclose the invention in sufficiently clear and complete way to be carried out by a person skilled in the art subject matter of the patent extends beyond the content of the application as filed (risk in case of amendments to restrict the scope of protection during the examination procedure) Facts-evidence: documents (patents, articles, catalogues etc.) or (rarely) affidavits of prior use (witness) Opposition division: three technical examiners The opposition ends with a reasoned Decision (revocation-maintenance-maintenance in amended form). An appeal can be filed against (among others) a decision of the opposition division. 6

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 Appeal against decision of Receiving Section, Examining Divisions, Opposition Divisions and Legal Division Composition of the board: two technical + one legal, can be enlarged to three technical two legal members Time limit=two months after the notification of the decision. The decisions of the board of appeals constitutes the case law of the EPO Last instance The notice shall not be deemed to have been filed until the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. Decision of the board of appeal constitute the basis for the generation of the case law. 7

Fees Application fee online filing € 90
Application fee Paper filing € 125 Search fee € 690 Designation fee € 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 Fees must be paid in time The filing fee and search fee must be paid within one month after the filing of the application. The designation fees shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. If the filing fee, the search fee or a designation/extension fee has not been paid within the above time limit, it may still be validly paid within a period of grace of one month of notification of a communication pointing out the failure to observe the time limit, provided that within this period a surcharge is paid.

Overview of the patent procedure at the EPO
Application 12 months Further or former applications (Priority) Formalities Publication, Search Report after 18 months Search Info Request for Examination max. 6 Months after search report Examination Reject Max. life time: 20 years Info Applicant Patent Grant EPO within 9 months Third Parties national Phase Translations Opposition

Thank you for your attention Questions
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Patent Protection in Europe

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