European patents

A European patent application is a patent application that is filed at the European Patent Office (EPO), which has its main offices in Munich (Germany) and The Hague (Netherlands).

A European application undergoes a central search and examination procedure, which if successful, results in the grant of a “European patent”.  Once granted, a European patent can then be “validated” in the countries of your choosing – whereupon it becomes a national patent in those countries. Depending on the countries selected, validation may be “automatic”, but may also involve filing translations, paying national fees and appointing national patent attorneys as an “address for service”.

A list of the countries that are covered by a European patent can be found here.  Note, however, that the EPC contracting states are not the same set of countries that are members of the EU.  When the UK leaves the EU (i.e. after “Brexit”) European patents will continue to be effective in the UK.

In other words, the European Patent Convention (EPC) provides a central procedure whereby an 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.

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 individual, 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 by the filing deadline).

If you are filing a European application out of an international (PCT) application (EPO regional phase), the European patent has the added advantage of enabling you to obtain patents in certain countries (most notably, France and Italy) via the EPO, whereas this option would not available (in those countries) directly from the PCT application as they are not PCT contracting states.

The European patent application procedure is somewhat complex, but has the following basic stages:

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

A European application can be a “first” application from which other patent applications can claim priority.  A European application can be a priority-claiming application too – provided it is filed within 1-year of an earlier application’s filing date, which was filed in a Paris Convention or WTO member state.  A European application can also be a “regional phase” application out of the PCT, in which case, it needs to be filed within 31-months of the PCT application’s filing or priority date.

The fees for filing a European application depend on the route by which it is filed, but besides professional fees, there are basically nine main fees that need to be paid to the EPO, which are:

  1. The filing fee (to begin processing the application)
  2. Claims fees (for the 16th and each subsequent claim)
  3. Page fees (for the 36th each each subsequent page)
  4. The search fee (pays for the EPO to carry out a search)
  5. The examination fee (pays for the EPO to carry out examination)
  6. The designation fee (enables the application to be effective in the EPC contracting states)
  7. Extension fees (enables the application to be effective in the EPC extension states)
  8. The grant and printing fee (payable on grant and before validation)
  9. Renewal fees (to keep the application pending after the 2nd year up to grant)

There may be other fees as well, such as the “further processing” fee, appeal fees, etc., but if the application is prosecuted diligently, then these other fees are not usually payable.

Once the application has been filed, the EPO will carry out a formalities check, and if there are any formal defects in the application, a deadline will be set within which to correct them.

Once the application has been filed and initially processed, the EPO will place the application in a queue for a search and/or examination.  This results in a Search Report or an Examination Report, which sets out any objections that the EPO has to the grant of a patent.  Typically, the Report will 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, and a deadline is set within which to reply.  The reply usually contains a mixture of arguments and amendments, which are intended to overcome the objections raised.

The application is published by the EPO – around 18-months after its filing or priority date, or in the case of Euro-PCT applications, shortly after entering the EPO regional phase.

If Examination has not been requested already, it must be requested within 6-months of the notice of publication being published in the European Patents Bulletin.

Thereafter, the procedure usually 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 usually be extended by 2-months, if necessary.

If all of the objections are overcome (at the search or examination stage), then the application will proceed into 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.

If the application is going to be refused, then there is an option to have a hearing, known as “Oral Proceedings”.  Oral Proceedings are an in-person Hearing before a panel of Examiners in Munich or The Hague. The outcome of the Oral Proceedings can be the grant of a patent, refusal of the application, or an Order for the case to be remitted back to the Examining Division for further work.  If the application is refused, then there is a right of Appeal to the EPO’s Boards of Appeal.

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

Once the above has been completed, 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 issue a grant certificate.  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, three-month window within which the European patent must then be “validated” (converted into a national patent) in any of the designated contracting states.

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.

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 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:

  1. the European patent is upheld un-amended,
  2. that it is upheld in an amended form, or
  3. 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.

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.

In other words, prior to grant of a European patent, you pay a single renewal fee to the European Patent Office each year.  After grant, you pay a separate renewal fee 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.