1. Seminar Industrial Property Protection Prague, 4 June 2003 Patent Protection in Europe Heidrun Krestel Liaison Officer Member States Co-operation Programmes and INPADOC European Patent Office

2. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

3. Seminar Industrial Property Protection Prague, 4 June 2003

4. Seminar Industrial Property Protection Prague, 4 June 2003 3 new member states which will join the EPC soon LT LV PL LithuaniaLatviaPoland

5. Seminar Industrial Property Protection Prague, 4 June 2003

6. Seminar Industrial Property Protection Prague, 4 June 2003 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 DG5 Patent law, international affairs, PR, technical co-operation

7. Seminar Industrial Property Protection Prague, 4 June 2003 The EPO’s Mission To examine patent applications To grant patents To publish and disseminate patent information

8. Seminar Industrial Property Protection Prague, 4 June 2003 Applications 1995 to 2002

9. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

10. Seminar Industrial Property Protection Prague, 4 June 2003 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.

11. Seminar Industrial Property Protection Prague, 4 June 2003 National procedures Application Invention CZ-Patent AT-Patent SE- Patent

12. Seminar Industrial Property Protection Prague, 4 June 2003 European procedure (EP) Invention Application up to 27 national patents European phase National Phase EPO Grant

13. Seminar Industrial Property Protection Prague, 4 June 2003 International procedure (PCT) Invention Application 179 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

14. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

15. Seminar Industrial Property Protection Prague, 4 June 2003 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)

16. Seminar Industrial Property Protection Prague, 4 June 2003 Filing the application 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)

17. Seminar Industrial Property Protection Prague, 4 June 2003 Filing the application 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

18. Seminar Industrial Property Protection Prague, 4 June 2003 Filing the application 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

19. Seminar Industrial Property Protection Prague, 4 June 2003 Filing the application 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 descrption of the way to carry out the invention indication of industrial application

20. Seminar Industrial Property Protection Prague, 4 June 2003 Filing the application 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

21. Seminar Industrial Property Protection Prague, 4 June 2003 Further detailed information via the EPO website www.epo.org

22. Seminar Industrial Property Protection Prague, 4 June 2003

23. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

24. Seminar Industrial Property Protection Prague, 4 June 2003 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

25. Seminar Industrial Property Protection Prague, 4 June 2003 Search and examination Search 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

26. Seminar Industrial Property Protection Prague, 4 June 2003

27. Seminar Industrial Property Protection Prague, 4 June 2003 Search and examination 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

28. Seminar Industrial Property Protection Prague, 4 June 2003 Search and examination 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)

29. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

30. Seminar Industrial Property Protection Prague, 4 June 2003 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

31. Seminar Industrial Property Protection Prague, 4 June 2003 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

32. Seminar Industrial Property Protection Prague, 4 June 2003 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.

33. Seminar Industrial Property Protection Prague, 4 June 2003 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.

34. Seminar Industrial Property Protection Prague, 4 June 2003 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

35. Seminar Industrial Property Protection Prague, 4 June 2003 Granting 65% Patents granted 6.2 % opposed 10% Withdrawn after search report 25% rejected or withdrawn during examination

36. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

37. Seminar Industrial Property Protection Prague, 4 June 2003 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

38. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

39. Seminar Industrial Property Protection Prague, 4 June 2003 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

40. Seminar Industrial Property Protection Prague, 4 June 2003 Topics of this presentation Introduction to the EPO General issues Filing Search and examination Granting Opposition Appeal Summary

41. Seminar Industrial Property Protection Prague, 4 June 2003 Fees Application fee€ 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

42. Seminar Industrial Property Protection Prague, 4 June 2003

43. Seminar Industrial Property Protection Prague, 4 June 2003 Overview of the patent procedure at the EPO Formalities Request for Examination Application Grant Patent Reject Opposition within 9 month Further applications (Priority) 12 month Info Applicant EPO Third Parties Max. life time: 20 years Search Publication, Search Report max. 6 Month after search report - + Translations national Phase after 18 months

44. Seminar Industrial Property Protection Prague, 4 June 2003 Thank you for your attention Questions