The European Patent Office and the patent granting procedure

The European Patent Office and the patent granting procedure
Selected aspects of the
patent application procedure
before the EPO
Dr. Kirsten Niebuhr-Ebel
Examiner Biotechnology
EPO Munich
September 2009
What is a patent?
The European Patent
•
A patent is a legal title granting its holder
the right to prevent third parties from
commercially using an invention without
his authorisation.
•
In return for protection, the holder has to
fully disclose the invention to the public.
•
Protection is granted:
– for a limited period, generally 20
years
– for a specific geographic area
What is patentable?
•
To be patentable, an invention must:
– have a technical character (e.g. comprise a product, process or
apparatus)
– be new
– involve an inventive step
– be industrially applicable
•
Some innovations are not patentable under the EPC:
– for example, mathematical methods or formulae, computer programs
and business methods are not regarded as inventions
– new plant or animal varieties and inventions whose commercial
exploitation would be contrary to "ordre public" or morality (e.g. the
cloning of human life) are examples of inventions excluded from
patentability
The European Patent
What advantages does a European patent have?
• Possibility to obtain patent protection in nearly 40 European countries on the
basis of a single application, “à la carte” market by designation of countries
The European patent
What advantages does a European patent have?
• Possibility to obtain patent protection in nearly 40 European countries on the
basis of a single application, “à la carte” market by designation of countries
• Centralized procedure and therefore cost effective and time-saving
The European patent
What advantages does a European patent have?
• Possibility to obtain patent protection in nearly 40 European countries on the
basis of a single application, “à la carte” market by designation of countries
• Centralized procedure and therefore cost effective and time-saving
• Same legal effects as national patents in each designated country, therefore
providing strong protection
The European patent
What advantages does a European patent have?
• Possibility to obtain patent protection in nearly 40 European countries on the
basis of a single application, “à la carte” market by designation of countries
• Centralized procedure and therefore cost effective and time-saving
• Same legal effects as national patents in each designated country, therefore
providing strong protection
• Term, scope of protection and binding text are the same for all contracting states
The European patent
Overview of European patent grant procedure (I)
Early indication of
patentability prospect:
Applicant
European
patent
application
EPO
Filing and
formalities
examination
Public
domain
• enables early informed
decisions by applicant
• third parties and public
better aware of
prospects of application
Search and search
report together
with preliminary
opinion on patentability
Publication of application
and search report
Online access to application
file and legal status information
Refusal or
withdrawal
of application
Validation in
designated
states
Substantive
examination
Grant of
European
patent
Publication
of patent
specification
Overview of European patent grant procedure (II)
New option for applicants to
limit scope or revoke patent ab
initio
Applicant
EPO
Refusal of
application
Substantive
examination
Grant of
European
patent
Limitation or
revocation
proceedings
Appeal
proceedings
Opposition
proceedings
Fate of the biotech applications
from search to grant
% started
Opposition 2
Grants
35
withdrawals
30
Refusal
5
Request for examination
70
Searches
100
0
20
40
60
80
100
120
Filing a patent application
a) National Patent Offices (Art. 75(1)b) and 77 EPC)
- advantage: entry to the procedure is relatively cheap and applicants can use their own
language
- period of 12 months to file applications for the same invention elsewhere (priority of the
date of first filing for subsequent applications)
b) EPO (Munich, The Hague, Berlin) (Art. 75(1)a) EPC)
- direct filing at the EPO (less common)
c) International: PCT (Patent Coorporation Treaty) (Art. 150 and ff. EPC)
- simplified patent application procedure for over 140 countries worldwide
- international phase: international search report (ISR) and - upon request - international
preliminary examination report (IPER)
- national or regional phase: patent granting procedure carried out by relevant national or
regional patent offices (e.g. EPO)
The European patent
Applications filed
63 013
“direct” European
filings
62 755
83 548
Euro-PCT
applications
entering the
regional phase
78 684
0
90 000
2007
2008
Components of a European
patent application (Art. 78 EPC)
•
•
•
•
•
Request for grant (R. 41 EPC)
Description of the invention (R. 42 EPC)
Claims (Art. 84, R. 43 und R. 45 EPC)
Drawings (R. 46 EPC)
Abstract (Art. 85, R. 47 EPC)
•
in any language (a translation into English, French or German needs
to be filed within two months, if applicable)
The European patent
Request for grant of a European patent
The European Patent
Filing and formalities examination (Art. 90 EPC)
Requirements for the accordance of a date of filing (R. 40 EPC):
- indication that a European patent is sought
- information identifying the applicant
- a description or reference to a previously filed
application
Formal requirements:
• Form and content of application
• Representation (Art. 133-134 EPC)
• Priority (Art. 87-89 EPC)
• Designation fee (Rule 39 EPC)
• Designation of inventor (Art. 81 EPC)
The European patent
Search
The Search (Art. 92 EPC)
•
•
To discover the state of the art
Prepares for substantive examination and is relevant for the purpose
of determining whether the invention is new and involves an inventive
step
The Search Documents
•
Internal and external documents; Patent and non-patent literature
The Search Report (R. 61 EPC)
•
•
Contains results of the search
Opinion whether the application and the invention to which it relates
meet the requirements of the EPC (R. 62 EPC)
The European patent
Publication
•
18 months after date of filing or priority date
•
File inspection (online) http://www.epoline.org/portal/public
•
A- and B-Publications
Server
(Articles 93, 98, 103 EPC)
available via Publication-
http://www.epo.org/patents/patent-information/europeanpatent-documents/publication-server.html
•
Provisional protection
•
Observations by third parties
The European patent
(Art. 67 EPC)
(Art. 115 EPC)
6 months from publication
of the Search Report
•
Confirmation of the request for examination (Art. 94 EPC)
•
Payment of the designation fee (Art. 79(2) EPC)
•
Payment of extension fees
The European patent
Substantive Examination
Determination by the EPO whether or not the subject-matter of a
European patent application meets the requirements of the
European Patent Convention
Basic requirements:
•Patentable invention in any field of technology (Art. 52-53 EPC)
•Novelty (Art. 54 EPC)
•Inventive step (Art. 56 EPC)
•Industrial application (Art. 57 EPC)
The European patent
Novelty (Art. 54(1) EPC)
An invention shall be considered to be new if it does
not form part of the state of the art.
The “state of the art”
comprises everything made available to the public by
means of written description, oral description, use, in
any other way before the date of filing (or date of
priority) of the European patent application.
(Articles 54(3),(4), (5) and 55 EPC)
The European patent
Inventive step
(Art. 56 EPC)
An invention shall be considered as involving an inventive step if,
having regard to the state of the art, it is not obvious to a person
skilled in the art.
Problem and solution approach
(Guidelines for Examination in the EPO C-IV, 11)
The European patent
Industrial applicability
(Article 57 EPC)
An invention shall be considered as susceptible of
industrial application if it can be made or used in any kind
of industry, including agriculture.
The European patent
Refusal or grant
•
(Art 97 EPC)
The application meets the requirements of the EPC: grant
- translation of the claims
- payment of fee for grant and publication
– Opposition period begins (9 months)
– Administration goes over to the national offices (+ 'Validation')
•
The application does not meet the requirements of the EPC: refusal
(possibility of appeal)
The European patent
Opposition procedure
•
Within 9 months from the publication of the mention of the grant of the
European patent any person may give notice of opposition to the
European patent granted.
•
Opposition procedure leads either to the maintenance of the patent,
maintenance of the patent in amended form or the revocation of the
patent.
The European patent
Oppositions in 2008
Oppositions were filed against 5% of granted European patents.
Over one third of all opposed patents were revoked.
Opposition
rejected
Patent
revoked
28.6%
5%
39.8%
Oppositions
31.6%
Granted patents
Patent
maintained
in amended form
Appeal procedure
• The Legal Board of Appeal and the Technical Boards of Appeal
give independent final rulings on appeals against decisions taken
during grant and opposition proceedings.
• The Enlarged Board of Appeal gives decisions and opinions in
order to ensure correct application of the law, or if an important point
of law arises. It also gives decisions on petitions of review on the
decisions of the Board of Appeal.
The European patent
Relating to EP or PCT patent granting procedure:
EPO Information Office Munich
[email protected]
Tel +49-89-23994512
EPO Customer Services
[email protected]
Tel +49-89-2399INFO (2399 -4636)
Thank you for your attention !
The grant procedure at a glance
Applicant
European
patent
application
Refusal of the
application
Validation in
the designated
states
Limitation or
revocation
proceedings
European
Patent
Office
Filing and
formalities
examination
Public domain
Search and search
report together
with a preliminary
opinion on
patentability
Publication of
the application
and search
report
Observations by
third parties
possible
The European Patent
Substantive
examination
Grant of a
European patent
Appeal
proceedings
Opposition
proceedings
Publication of
the patent
specification
EPO Fees
Filing phase
EUR
1230
Online applications
EUR
1150
Examination phase
EUR
2 305
Grant phase
EUR
1 290
Total procedural fees
EUR
4 825
Online applications
EUR
4 745
The European Patent
Formalities Examination (Art. 90 EPC)
•
Filing fee (€180 or online filing €100) including additional fee (€12 for
the 36th and each subsequent page)
•
Search fee (€1050)
•
Where appropriate, claims fees (€200 for the sixteenth and each
subsequent claim and €500 for the 51st and each subsequent claim)
•
Translation (Art. 14 EPC)
•
Designation fee for one or more contracting states (€500)
The European patent
Online filing
2000
Thanks to the EPO's electronic epoline
service, applicants were able for the first
time to file patent applications via the
Internet.
Online fee payment and
file inspection followed 2002.
Since March 2009 online filing of
oppositions and appeals is available.
The European patent
European patents granted
2008
59 819
2007
54 700
0
64 000
Tool Kit
•
Guidelines for Examination in the EPO
•
Case Law of the BoA of the EPO
•
Official Journal of the EPO
•
Guide for applicants parts I and II
•
www.epo.org
The European patent
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