Content

This is an outline of the European patent application procedure which 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 nine Member States of the European Patent Organisation as well as one non-member Extension State and, through validation agreements, in five 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. As of 1 June 2023 it has also been possible to obtain an EU unitary patent through the existing European patent application procedure.

The European Patent Convention (EPC) is an international treaty which is separate to (and in fact predates) the European Union. Accordingly, the procedure was not affected by Brexit. We have a separate article with our comments on the implications of Brexit on patents.

Filing a new European patent application

The European patent application procedure is administered by the European Patent Office (EPO). A European patent application is filed with the EPO and includes an application form and a patent specification. A complete patent specification includes a description of the invention, drawings, claims (which set out the scope of protection sought) and an abstract.

Provided that various quite stringent legal requirements are met, a European patent application may claim priority from one or more earlier patent applications filed in the preceding year. For example, it is common for UK based applicants to file a UK patent application in the first instance and then, within one year, to file a European patent application with a claim for priority from the first application.

Search

Several months after the application has been filed, a search report should issue which lists the documents which an examiner at the EPO considers to be relevant to the patentability of the claimed invention. The search report is issued with an examiner’s opinion on the patentability of the invention.

Designation of inventor

Within sixteen months of filing the application (or, if applicable, of the filing date of the earlier application from which priority is claimed), it is necessary to file a Designation of inventor form. The Designation of inventor form gives the name and correspondence addresses of the inventors and sets out in brief terms how the applicant(s) derive title in the invention from the inventor(s). For example, it may be that an applicant is a company which employs some or all of the inventors.

Publication

In due course a European patent application is published. Unless early publication is requested, publication takes place no earlier than eighteen months from the filing date (or, if priority is claimed, from the earliest priority date).

If the search report is available, the application is published with the search report (resulting in an “A1” publication). Otherwise, the application is published without the search report (an “A2” publication), the search report being then published later when available (an “A3” publication).

Requesting examination and paying designation fees

In order to proceed with the European application it is necessary by a deadline of 6 months from the publication of the search report to request examination which includes payment of the examination fee. This deadline is typically about two years from the date of filing (or the earliest priority date, if priority is claimed).

At the same time it is usually necessary to file a written statement commenting on the objections raised in the opinion accompanying the European search report. It is common also to amend the description and/or claims at this time.

Furthermore, it is necessary by the same deadline to pay the so-called designation fee, and also to pay extension and/or validation fees if it is desired to extend the scope of protection to any of the so-called extension and/or validation states.

Prosecution

Once examination has been requested, there is usually a delay of several months 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 setting out objections to the application. An examination report is issued with a response deadline. Common objections may be that the claims cover subject matter which is not novel or which does not have an inventive step. However 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 considers that the application does not meet the requirements of the EPC, 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 an application is refused, it is possible to file an appeal against this decision.

Renewal fees after filing

During the European patent application procedure, it is necessary to pay renewal fees annually, 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.

Grant

Provided that the EPO finds the application to meet the requirements of the EPC, a “Decision to Grant” letter will be issued, as will be a proof copy of the text approved for grant (the so-called “Drückexemplar”).

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 formal and translation requirements of each country.

Formal requirements vary from territories such as the UK and Germany where it is necessary only to name an address for service, through to countries such as Spain, Italy and Poland, whose validation requirements include the filing of a translation of the entire patent. Some other countries require the claims of the patent to be translated (in some cases provided that the European patent was prosecuted in English).

Since 1 June 2023 it has also been possible to register an EU Unitary Patent which provides coverage in 17 EU countries in a single right. We have a separate article which discusses whether to register an EU Unitary patent.

Opposition period

Once the EPO has published the mention of grant of a European patent, there follows 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.

Accelerating the application process

The European patent application procedure from filing to grant usually takes from 3 to 6 years, however there are a number of ways to shorten the application procedure, including requesting acceleration under the PACE scheme.

Hindles are a firm of European Patent Attorneys. If you have any questions about European patents, please do not hesitate to contact us.