Grant procedure before the European Patent Office


Grant procedure before the European Patent Office
Graph of European patent applications filed and granted between 1998 and 2007. Note that the average time from filing to grant in 2007 was 43.7 months (3.6 years)

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application,[1] the examination of formalities,[2] the establishment of a search report,[3] the publication of the application,[4] its substantive examination,[5] and the grant of a patent,[6] or the refusal of the application,[7] in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation.[8] The patents granted in accordance with the EPC are called European patents.[9]

In other words, the grant procedure before the EPO is the procedure leading to the grant of a European patent[6] or to the refusal to grant a European patent.[7] The procedure starts with the filing of an application[1] and ends with the grant of a European patent[6] or the refusal of the patent application[7] by the EPO, or the withdrawal of the application by the applicant, or its deemed withdrawal.[10] The prosecution of European patent applications until grant typically takes several years.[11]

Contents

Main procedural steps

Filing

EPO headquarters at Munich

European patent applications can be filed at the EPO at Munich, Germany, at The Hague, Netherlands,[12] at Berlin, Germany,[13] or "if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State".[14] This latter provision is important in some countries. For example, in the United Kingdom, it used to be required to obtain clearance for all inventions but now it is only prohibited for a UK resident to file an overseas patent application for inventions in certain sensitive technical areas without obtaining clearance through the United Kingdom Intellectual Property Office first.[15] European patent applications cannot be validly filed at the EPO in Vienna, Austria.[16]

Within one month after the filing of an application, a filing fee and a search fee must be paid.[17] Additional fees may also be due depending on the size of the application and the number of claims. Namely, if the application comprises more than 35 pages, an additional fee is due (of 12 Euros, as of April 2009) for the 36th and each subsequent page.[18] Furthermore, if the application contains more than fifteen claims at the time of filing, claim fees are due.[19] As of April 2009, a claims fee of 200 Euros is due for the 16th and each subsequent claim up to the limit of 50, and a claims fee of 500 Euros for the 51st and each subsequent claim.[20]

European patent applications must be filed in one of the three official languages of the EPO, in English, French or German.[21] However, some applicants[dated info] are allowed to file European patent applications in "admissible non-EPO languages", provided that a translation in English, French or German is filed in due time,[22] "within three months after the filing of the European patent application, but no later than thirteen months after the date of priority". In the case of a European divisional application, or in the relatively rare case of a new European patent application under Article 61(1)(b) EPC, "the translation may be filed at any time within one month of the filing of such application".[23] The official language of the EPO in which the application is filed, or the language used when the application was filed in an "admissible non-EPO language", is used as the language of the proceedings.[22]

Formalities examination

The examination of whether the requirements for the accordance of a filing date [24] and other formal requirements are satisfied is carried out by the EPO, in accordance with Article 90 EPC. If a date of filing cannot be accorded, the application is not be dealt with as a European patent application.[25] If the European patent application has been accorded a date of filing, but if there are other formal deficiencies, the applicant is offered an opportunity to correct these deficiencies.[26] If the deficiencies are not corrected, the European patent application is refused, unless a different legal consequence applies.[27]

Oral proceedings may exceptionally take place before the Receiving Section,[28] to give an opportunity to the applicant to be heard on an issue involving formality requirements.

Publication

A European patent application is published as soon as possible "after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority", or "at the request of the applicant, before the expiry of that period".[29] While early publication of a European patent application can be requested, there are no provisions in the EPC which would permit any delaying of the publication.[30] There is indeed an overriding public interest in the timely publication of the application.[30]

Search

The Search Divisions of the EPO establish search reports, named "European search reports", on the basis of the claims, "with due regard to the description and any drawings".[31] The European search report established for a patent application is transmitted to the applicant together with copies of any cited documents.[32]

"The search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable (...). Knowledge of the prior art forms the basis for examination of the application by the examining divisions. It is also important for applicants, giving them a basis for deciding whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted." [33]

Before the search, communications between the search division and the applicant were not foreseen, before April 1, 2010. However, under new Rules 62a and 63 EPC,[34] if there are more than one independent claim per claim category (and if the provisions of Rule 43(2) EPC are considered not to be met) or if the search division considers that it is impossible to carry out a meaningful search based on the subject-matter claimed, communications between the search division and the applicant are possible.[35] Under Rule 137(1) EPC however, no amendments to the application can be made before the search "unless otherwise provided".[36]

Along with the search report, a search opinion is also established.[37] The search opinion and the search report form together the so-called extended European search report.[38] Before April 1, 2010, a response to the search opinion was optional.[39] Currently however,[34] under new Rule 70a EPC, a reply to the search opinion is mandatory,[40] within six months "after the date on which the European Patent Bulletin mentions the publication of the European search report" (which is also the time limit for requesting examination).[41] If no reply is filed to the search opinion, the application is deemed to be withdrawn.[42] The search opinion is therefore a conventional office action with a given time period to respond.

Designation of States and request for examination

Under Article 79(1) EPC, all the Contracting States party to the EPC at the time of filing of a European patent application are deemed to be designated in the request for grant of a European patent, i.e. upon filing of the application. Under Article 79(2) EPC and Rule 39(1) EPC, designation fees must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. For applications filed on or after April 1, 2009, the designation fee is 500 Euros whatever the number of designated Contracting States.[43]

Substantive examination