EPO regional phase

It is possible to convert an international (PCT) patent application into a European regional application by entering the EPO regional phase.

The deadline for filing the European application, or “entering the European regional phase”, is 31-months from the PCT application’s filing or priority date, whichever is earlier.  (Read more about entering the EPO regional phase late.)

A European patent application is a single patent application that is filed at the European Patent Office (EPO).  It undergoes a central search and examination procedure, which if successful, results in the grant of a “European patent”.

Once granted, a European patent then needs to be “validated” in the countries of your choosing – before it becomes a national patent in each selected country.  Depending on the countries selected, validation may be “automatic”, but it may also involve filing translations, paying national fees and appointing national patent attorneys as an “address for service”.

The countries that are currently covered by a European patent are:

  1. Albania
  2. Austria
  3. Belgium
  4. Bulgaria
  5. Switzerland
  6. Cyprus
  7. Czech Republic
  8. Germany
  9. Denmark
  10. Estonia
  11. Spain
  12. Finland
  13. France
  14. United Kingdom
  15. Greece
  16. Croatia
  17. Hungary
  18. Ireland
  19. Iceland
  20. Italy
  21. Liechtenstein
  22. Lithuania
  23. Luxembourg
  24. Latvia
  25. Monaco
  26. Former Yugoslav Republic of Macedonia
  27. Malta
  28. Netherlands
  29. Norway
  30. Poland
  31. Portugal
  32. Romania
  33. Serbia
  34. Sweden
  35. Slovenia
  36. Slovakia
  37. San Marino
  38. Turkey

Please note that the EPC contracting states are not the same set of countries as the member states of the European Union (EU).  Further, when the United Kingdom leaves the EU, this will have no effect on EP(UK) patents because the European Patent Convention is an extra-governmental agreement that has nothing to do with the EU.

In other words, the European Patent Convention (EPC) provides a central procedure whereby a single application can be prosecuted up to grant.  Once granted, the contracting states to the EPC are obliged to treat the granted European Patent as being equivalent to a national patent filed directly in that office – provided certain post-grant requirements are met.

As such, the filing of a European application is just the first step in fairly long and complicated process.  Nevertheless, filing a single European application is almost always less expensive, and less complicated than filing a bundle of national applications in the EPC contracting states of your choosing.  In addition, by filing a single European application, you defer the point at which you have to select the countries in which you require a patent (post-grant, as opposed to within 30-months of the priority date.  You are also able to obtain patents in certain countries (most notably, France and Italy) via the EPO, whereas this option is not available (in those countries) directly from a PCT application.

The European patent application procedure is somewhat complex, but has the following basic stages, the costs for each stage being set out separately below:

  1. Filing
  2. Post-filing formalities
  3. Search
  4. Publication
  5. Prosecution (responding to examination reports)
  6. Grant
  7. Validation
  8. Opposition
  9. Maintenance

Stage 1 – filing 

The cost of entering the European regional phase consists of professional fees for filing the application, plus the official fees paid to the EPO.

In many cases, it is recommend to re-draft the PCT application to comport with EPO practice.  This typically involves: re-drafting the application to comply with the formal requirements of an EPO application; reducing the number of claims to 15 or fewer but adding “statements” to the description to avoid deemed abandonment of subject matter; inserting reference signs in the claims in parentheses; adding multiple claim dependencies; framing the independent claims in the two-part form; and making amendments to the specification to address objections raised in the international phase.

The EPO official fees include:

  • Filing fee
  • Search fee
  • Examination fee
  • Designation fee
  • Claims fees (for the 16th and each additional claim thereafter)

Stage 2 – Post-filing formalities

The EPO normally accepts our authorisation at face value.  However, we may be required to file an authorisation to represent the you.  If this happens, of if any other formal objection arise, we will let you know.  There may also be other matters to deal with, such as dealing with later fees, filing certified copies of priority documents where they are not already on the PCT docket, and so on.

Stage 3 – Search

Once the application has been filed, the EPO will place the application in a queue for search and examination.  If the EPO drew-up either or both of the International Search Report and/or the International Preliminary Examination Report (if a PCT “Demand” was filed via the EPO), then the EPO will issue a “Rule 161 Communication” directing us to respond to any objections raised during the international phase within a period of 6-months.  It is our standard procedure to file a response to any objections raised by the EPO during the international phase upon entry into the EPO regional phase, but we would nevertheless need to confirm that the response filed upon EPO entry is to be considered a substantive response to the “Rule 161 Communication”.  By filing a preemptive response, not only does this approach considerably speed-up the application procedure, but it also reduces the overall cost as we do not need to separately report and substantively respond to the “Rule 161 Communication” later.

In other cases (where the EPO did not draw-up the International Search and/or Examination Report), the EPO will draw-up an Extended European Search Report, to which a response will also be due within 6-months.  The Extended European Search Report will usually contain a list of prior art citations and an Examiner’s Opinion explaining why the Examiner does not consider the invention to be patentable, or the application allowable.  Responding this Report is mandatory, otherwise the application will be deemed withdrawn.

We have a fixed-fee system in place for analysing the Search Report and Search Opinion, which includes us providing an opinion on the application’s prospects, and some skeleton amendments/arguments.  Our fees for filing a response the Search Report and Search Opinion also fixed, and this next step involves us taking into account your instructions following on from our skeleton response, preparing and e-filing a formal response, making amendments and reporting to you.

Stage 4 – Publication

The application will be re-published by the EPO in the form of a cover sheet only that accompanies the PCT application as-published.

Stage 5 – Prosecution

Thereafter, the procedure will involve a series of Examination Reports issued by an EPO Examiner (raising objections) and responses by us (with arguments and, where necessary, amendments to the specification).  The deadline for responding to each Examination Report is usually 4-months, but these deadlines can often be extended by 2-months, if necessary.

Again, our fees for analysing each Examination Report are fixed, as are our fees for filing a response the Examination Report.

If all of the objections are overcome (at the search or examination stage), then the application will proceed to the grant procedure.  However, where any objections remain outstanding, further Examination Reports will be issued until such time as the application is in order, or refused.  Further costs (as above) will be incurred for dealing with further Examination Reports.

If the application is refused, then we will have requested Oral Proceedings during the Examination procedure.  “Oral Proceedings” are an in-person Hearing before a panel of Examiners in Munich or The Hague.

Stage 6 – Grant

If/when the EPO decides to grant a patent for the invention, we will need to approve the text intended for grant, check the applicant/inventor details, pay the grant and publication fee and file translations of the claims into French & German.

Once that has been done, the EPO will publish the fact that the European Patent has been granted in the European Patents Bulletin (EPB).  The date on which the EPB mentions the grant of the patent will be the official “grant date” of the patent.  The EPO will also send a grant certificate and we will forward this to you for safekeeping.

Typically, it takes a few months from the competition of the pre-grant stage for the EPO to re-publish the patent as a “B specification” and for the EPB to be updated to include the mention of grant.

Nevertheless, the actual grant date is critical because it triggers the start of an inextensible window within which the European patent must then be “validated” (converted into a national patent) in any of the designated contracting states.

Stage 7 – Validation

The member states of the European Patent Organisation have harmonised their patent laws with the European Patent Convention (EPC). This means that the Patent Offices of the member states have agreed that that if the EPO decides that an invention is patentable under the EPC, then the national Patent Offices will uphold, and treat, a European Patent granted by the EPO in the same way as if it had been applied for at, and granted by, the national Patent Office.

However, a European Patent is not a single “EU-wide” patent – it needs to be converted into a national patent in the relevant contracting states by a process known as “validation”.  The validation requirements vary from country to country, but to generalise, it will normally be necessary to file a translation of the application (or sometimes just the claims) in an official language of relevant country, to appoint a local address for service (a local patent attorney, and to set up a renewals system.

In 2008, the “London Agreement” was signed, which simplified the translation requirements for validating European patents.  As such, some countries no longer require a translation (UK, France and Germany, for example), whereas other countries only require a translation of the claims (and not the entire specification).  Given that certain member states have the same official languages; it is possible to reduce costs by splitting the translation costs across a number of validations.

Stage 8 – Opposition

Once the mention of grant has been published in the EPB, any person (other than the patentee) may oppose the grant of the patent.  This may happen if, say, a competitor feels that the patent might present an obstacle to the commercialisation of its products, or in rare cases, where there is a public interest in getting a patent revoked.  The third party has a fixed, 9-month window within which to oppose a granted European patent.

The patent may only be opposed on the grounds that the invention is not new or not inventive (“unpatentable”); that the application contains information that was not disclosed in the application as originally filed (“added matter”); and that it does not describe the invention clearly and completely enough for a person skilled in the art to be able to work the invention (“insufficiency”).

There are three possible outcomes of an Opposition, namely that the European patent is upheld un-amended, that it is upheld in an amended form, or that it is revoked.  Because revocation takes place centrally, the Opposition route avoids the necessity to apply for revocation in each of the countries in which the European patent has been validated.  The “central attack” facet of the Opposition procedure, and the fact that the Opponent has locus standi makes it a particularly attractive option.  As such, it is not uncommon for competitors to defer taking action until after the grant of a patent.

Stage 9 – Maintenance

Renewal fees are payable on European patent applications, from the second anniversary of the filing date, for the entire pendency of the application, i.e. up to the date when the mention of grant of the patent is published in the EPB.  After this date, renewal fees are payable to each of the national patent offices in which the patent has been validated.

As such, in certain cases, it may be advantageous to try to delay or speed-up the grant procedure before the EPO, although this will depend on the number of countries in which you intend to validate the patent.

The cost of renewing a patent post-grant depends on the local Patent Office’s official fee as well as the professional fees (local attorneys’ fees and standard charges for monitoring deadlines etc.).

European patents have a maximum life of 20 years from their filing (not priority) dates.