1. The European Patent Granting Procedure
Domenico Golzio
European Patent Office
Cyberlaw Torino
Tecnologie digitali e diritto nell’era della Rete
Luglio 2004
Fondazione Giovanni Agnelli - Torino

2. 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

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

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

5. 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

6. 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

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

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

9. 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

10. 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)

11. 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

12. 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

13. 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 *

14. ... 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” *

15. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

16. 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

17. 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

18. 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

19. 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

20. 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

21. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

22. 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

23. 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

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

25. 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

26. 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!

27. 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 documents re-classified.
But with defined classes.....

28. 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 !!!

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

30. 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

31. 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

32. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

33. 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

34. 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

35. 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

36. 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)

37. 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 !!!

38. 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

39. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

40. Overview The examination division The claims Patentability
Refusal or Grant

41. 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

42. 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

43. 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).

44. 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

45. 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

46. 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.

47. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

48. 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

49. 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

50. The European Patent Granting Procedure
Filing
Search
Publication
Examination
Grant
Opposition

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

52. 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.

53. 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.

54. 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.

55. Opposition
Opponent
Proprietor

56. 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

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

58. 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

59. 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

60. 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

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

62. 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

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

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

65. 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

66. Costs for an EP (average)
( )
( 8 states; duration of 10 years)
EPO EUR
Filing EUR
S&E EUR
Grant EUR
% of total %
Translations
in contracting states
EUR
% of total %
Total Costs
EUR
Professional Representation
EUR
% of total %
Yearly Taxes EUR
% of total %

67. If you have further question, please consult
or write to
Thank you!!