This is an outline of the European patent application procedure for International PCT applications entering the national/regional phase in Europe before the European Patent Office (EPO). It is intended as a short introduction for those who are new to the process. There are a great many other features, options and rules which are not described.
A European patent application is a single patent application which can currently give rise to rights in the thirty eight Member States of the European Patent Convention as well as two non-member Extension States and, through validation agreements, in two Validation states.
Although a European patent application is processed as a single application until grant, successful applicants ultimately obtain a bundle of separate patents in individual states. Note that the proposed EU unitary patent will be obtained through the existing European patent application procedure, as set out below, if and when it comes into effect.
Note also that the European Patent Convention is separate to (and in fact predates) the European Union. Accordingly, the procedure has not been affected by Brexit. We have a separate article with our comments on the implications of Brexit on patents.
Deadline for entering the European regional phase from a PCT application (Euro-PCT)
The deadline for entering the European regional phase is 31 months from the earliest priority date of the PCT application. If this deadline is missed then it is possible to validly enter the European regional phase within 2 months of the date of notification of a letter which the EPO issue shortly after the original deadline is missed, provided that a further processing request is made and associated fees as paid. The additional cost of using further processing for this missed act is significant, the official fees being 50% of any missed official fees and potentially an additional further processing fee if the request for examination was missed.
Entering the European regional phase where the International Searching Authority was not the EPO (e.g. the USPTO)
For a typical PCT application, filed 12 months after a priority-establishing application, entry into the European regional phase requires payment of the filing fee, the search fee, the designation fee and the examination fee all together. The first renewal fee is not due for another 5 months (24 months from the filing date) but can also be paid on filing for simplicity. Where the PCT application is published in a language other than English, French or German, a translation of the specification must also be submitted on entry to the European regional phase.
Shortly after the European application is filed, the EPO will issue a communication (under Rule 161(2) EPC), setting a deadline of six months for the applicant to amend the application and to pay any necessary excess claims fees (a fee is due for each claim in excess of 15) due for the amended application. It is common to reduce or entirely avoid payment of excess claims fees by combining dependent claims to reduce the number of claims.
The next stage in the process is the issuance of a supplementary European Search Report (which typically takes six months to a year from filing).
Shortly after issuance of the supplementary European Search Report, the EPO will issue a communication under Rule 70(2) EPC, setting a deadline of six months for the applicant to:
- confirm the request for examination previously made;
- comment on any objections raised in the supplementary European Search Report; and
- submit any further amendments to the specification to address objections raised in the supplementary European Search Report
Only after these stages have been performed will the application proceed to substantive Examination. The communications under rules Rule 161(2) and Rule 70(2) respectively may each be waived to accelerate the procedure, though this is not generally preferred.
Entering the European regional phase where the International Searching Authority was the EPO
For a typical PCT application, filed 12 months after a priority-establishing application, entry into the European regional phase requires payment of the filing fee, the designation fee and the examination fee all together. The first renewal fee is not due for another 5 months (24 months from the filing date) but can also be paid on filing for simplicity. The search fee is not required because the EPO has already conducted a search for this application in its capacity as the International Searching Authority. The International Search Report takes the place of the European Search Report. Where the PCT application is published in a language other than English, French or German, a translation of the specification must also be submitted on entry to the European regional phase.
Shortly after the European application is filed, the EPO will issue a communication (under Rule 161(1) EPC), setting a deadline of six months for the applicant to comment on any deficiencies noted in the International Search Report, amend the application and to pay any necessary excess claims fees (a fee is due for each claim in excess of 15) due for the amended application. It is common to reduce or entirely avoid payment of excess claims fees by combining dependent claims to reduce the number of claims.
The application then proceeds to substantive Examination. The communication under rules Rule 161(1) may be waived to accelerate the procedure, though this is not generally preferred.
The publication of the PCT application typically takes the place of the publication of the European patent application, though the bibliographic details of the European patent application will be republished shortly after entry into the European regional phase. The EPO will republish the European patent application where the PCT publication is in a language other than English, French or German.
Once examination has begun, there is usually a delay of six months to several years before a first examination report issues. Some applications are simply accepted in which case there is no further charge for prosecution. However, it is more usual to receive one or more examination reports. Examination reports set out objections to the application and have a response deadline. Common objections include that the claims cover subject matter which is not novel or which does not have an inventive step although there are quite a number of other grounds on which objections may be raised. Responses to examination reports set out reasoned arguments against the objections that have been raised and make amendments to the claims where appropriate. Sometimes several examination reports will be issued. If the Examining Division are not minded to accept the application the application will in due course be refused. It is common practice to request an opportunity to have an oral hearing before refusal takes place. If a case is refused, it is possible to file an appeal.
Renewal fees after filing
It is necessary to pay renewal fees annually during the European patent application procedure, from the end of the month in which the second anniversary of the filing date of the application falls. The renewal fees increase annually up to the 10th year and are constant thereafter.
Provided that the European Patent Office accepts the application, they issue a “Decision to grant” letter and issue a “Drückexemplar”, which is a proof copy of the text approved for grant. It is possible to disapprove the text for grant and/or to make changes to bibliographic information but usually applicants will approve the text for grant and meet the other formal requirements which are to pay the grant and publication fees and file translations of the claims into French and German. If an applicant wishes to file a divisional application they should plan to do so by this time. Once a European patent is granted it is no longer possible to file a divisional application from that application.
Validation and submission of translations
Once the patent has been granted there is then a three month period during which it is necessary to validate the patent in individual European countries where protection is sought. The process of validation varies between countries, depending on the formal and translation requirements of each country. Formal requirements vary from territories such as the UK, France, Germany and Ireland where it is necessary only to name an address for service, through to countries such as Spain, Italy and Poland, who validation requirements including the filing of a translation of the entire patent. Some other countries require only the claims of the patent to be translated (in some cases provided that the European patent was prosecuted in English).
EU Unitary Patent
Note that there are advanced proposals to introduce an EU Unitary Patent. If and when these proposals come into force, this will provide a new option for obtaining patent protection in a number of EU countries. The option of a Unitary Patent is expected to be available for any European patent application granted after the proposals come fully into force.
Once the European Patent Office Official Journal has published a mention of grant of a European patent, there is a nine month period during which third parties may oppose the patent. Opposition proceedings follow a written procedure and typically terminate in an oral hearing. The final opposition decision is open to appeal.
Renewal fees after grant
Once a European Patent has been granted, it is necessary to pay renewal fees annually in respect of each territory where the patent remains in effect, to keep the patent in force for up to its maximum duration of 20 years from the filing date. Depending on the date of grant it is sometimes necessary to pay national renewal fees before validation procedures are complete.