Frequently Asked Questions About The Patent Protection in Europe?
September 2020
A. How can you protect an invention at an international level?
A.1. National Route
You can directly file separate patent applications at the same time in all of the countries in which you would like to protect your invention.
A.2. Regional Route
A regional patent application is one that may have an effect in a range of countries. You can file one regional patent application in order to have protection in all of the members of that regional patent. European Patent Application under European Patent Office (EPO) is an example of regional patent applications. (You may find more details about the European Patent Application below.)
A.3. Paris Convention Route
You can file a patent application in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of claiming the filing date of the first application.
Generally, patent applicants who wish to protect their invention in more than one country usually the first file a national or regional patent application with their national or regional patent office, and within 12 months from the filing date of that first application (a time limit set in the Paris Convention), they file their international application.
An international application does not mean a granted international patent, you still have to make national patent applications to be granted a patent in a foreign country. Applications through Paris Convention give you claiming rights.
A.4. Patent Convention Treaty Route
You can file an application under the Patent Convention Treaty (“PCT“), directly or within the 12-months period provided for by the Paris Convention from the filing date of a first application, which has legal effect in all Contracting States of the PCT. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
Application through Patent Treaty Convention gives you claiming rights in the 153 member states (contracting parties). (Do not forget to check the declarations and reservations made by some of the contracting parties before you decide your roadmap.)
The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.(This is also a patent application that does not grant an international patent, so you still have to make national patent applications to be granted a patent in a foreign country.)
National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent offices of the countries in which you want to obtain them.
B. How can you protect patents in Europe?
B.1. Convention on the Grant of European Patents (European Patent Convention)
European patents are granted for some or all of the contracting states to the European Patent Convention (“EPC”). The EPC constitutes a regional patent treaty within the meaning of Article 45(1) of the PCT, which means that European patents can be granted on the basis of an international application filed under the PCT.In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state.
The standard term of a European patent is 20 years from the date of filing of the application. Provided that the annual renewal fees are duly paid, patents remain in force for the maximum term.
Supplementary protection certificates (SPCs) are intellectual property rights that serve as an extension to a patent right. They apply to specific pharmaceutical and plant protection products that have been authorized by regulatory authorities. The EU wishes to provide sufficient protection for these products in the interest of public health and to encourage innovation in these areas to generate smart growth and jobs. Supplementary protection certificates aim to offset the loss of patent protection for pharmaceutical and plant protection products that occurs due to the compulsory lengthy testing and clinical trials these products require prior to obtaining regulatory marketing approval. An SPC can extend a patent right for a maximum of five years.
According to Article 65 of the EPC, any Contracting State may, if the European patent as granted, amended or limited by the European Patent Office is not drawn up in one of its official languages, prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted, amended or limited in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language. (Do not forget to check London Agreement: The Agreement on the application of Article 65 of the EPC.)
B.2. What are the advantages of choosing the European Patent Convention Route?
Uniformity: European patents have a uniform wording and a uniform extent of protection for all designated contracting states (and offer a high presumption of validity). Patent law in the contracting states has been extensively harmonized with the EPC in terms of patentability requirements. However, as grant procedures continue to be differently structured and are conducted in parallel by several offices, the national route generally leads to national rights with differing extents of protection.
Staggered fees: Processing fees in the European patent grant procedure are staggered; so at each stage of the procedure you have a further chance to decide, in the light of the completed stages, whether your interest in obtaining patent protection is still great enough to justify paying the next fee. In particular, the separation between search and substantive examination enables you to decide in the light of the European search report whether it is worth requesting substantive examination.
Accelerated processing: In certain circumstances, you may be interested in having your application processed faster, at the search stage or the substantive examination stage, or both. o If you file a request for accelerated processing, the EPO will make every effort to reduce the usual processing times as much as it can, under the program for accelerated prosecution of European patent applications.
Fees: Taking into account the fees levied for the European grant procedure, costs for representation by a single agent, and the cost of conducting the proceedings in a single language, a European patent as a rule costs about as much as three or four national patents. (Detailed information about fees is provided below.)
C. How can you file a European Patent Application?
C.1. Who can file European Patent Applications before the European Patent Office?
A European patent application may be filed by any natural or legal person, or anybody equivalent to a legal person, irrespective of nationality and place of residence or business. If you have your residence or principal place of business in a contracting state, you may act on your own behalf in proceedings before the EPO. If you have neither a residence nor your principal place of business in a contracting state, you must appoint a representative and act through him in all proceedings before the EPO other than in filing your European patent application and paying the fees.
C.2. What does a European Patent Application consist of?
Request for the grant of a patent: The request must be filed on a form prescribed by the EPO (EPO Form 1001). The request for grant form can be filed in electronic form using the EPO Online Filing (OLF) software or the EPO case management system (CMS).
Designation of the inventor: In your European patent application you must designate the inventor(s). You can designate the inventor(s) in the tools provided by the EPO for online filing. Another option is to fill in and file the “Designation of inventor” form (EPO Form 1002).
Claiming priority: If you or your predecessor in the title have duly filed an application for a patent, a utility model, or a utility certificate in or for any state party to the Paris Convention for the Protection of Industrial Property or any member of the World Trade Organization you may claim priority when filing a European patent application in respect of the same invention. You must file the European patent application no later than twelve months after filing the first application.
Filling by reference: Instead of filing application documents, you may file a European patent application by making reference to a previously filed application. When filing your patent application by reference to a previously filed application, you should indicate in the request for grant form the filing date, the file number, and the state or office where the previous application was filed. The reference must indicate that it replaces the description and any drawings.
Disclosing the invention: The European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Once a European patent application has been filed, no amendments extending beyond its content as filed may be made to the description, the claims, or the drawings.
Unity of invention: European patent applications must relate to a single invention only, or to a group of inventions so linked as to form a single general inventive concept.
Drafting the technical application documents: The requirements relating to the content of the description, claims, drawings, and abstract are set out in the EPC, European Patent Guide, and the EPO website.
C.3. Where can you file European Patent Applications?
You can file European patent applications in electronic form using the EPO Online Filing software, which can be obtained from the EPO free of charge (see http://www.epo.org). Filings using this software may be made online or on electronic data carriers admitted by the EPO. Alternatively, you may use the EPO case management system (CMS) or the EPO web-form filing service, which are also provided free of charge via the EPO website (www.epo.org). More than 95% of all European patent applications are filed in electronic form.
You may find the examples of patent applications provided by the EPO here.
C.4. What are the fees? How does the refunding work?
You may check the interactive fee list provided by EPO here.
The examination fee is refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the substantive examination has begun. The examination fee is refunded at a rate of 50% if the European patent application is withdrawn after the substantive examination has begun but before the expiry of the time limit for replying to the first invitation under Article 94(3) EPC issued by the examining division proper or, if no such invitation has been issued by the examining division, before the date of the communication under Rule 71(3) EPC.
Similarly, the search fee paid for a European search is refunded in full if the European patent application is withdrawn, refused, or deemed to be withdrawn before the Office has started drawing up the search report. The European search fee is refunded in full or in part if the European search report can be based on an earlier search report already prepared by the EPO on a national, European, or international application whose priority is claimed or, in the case of divisional applications, where the search report is based on an earlier search report prepared by the EPO on the parent application. A refund of the search fee can be requested by crossing the box in section 40 of the request for grant form.
The designation fee falls due on the date on which the publication of the European search report is mentioned in the European Patent Bulletin. It can only be refunded if the European patent application is withdrawn, refused, or deemed to be withdrawn before that publication date. After that date, the designation fee is deemed to have been validly paid and can therefore not be refunded.
As a general rule, the EPO will make refunds to a deposit account held with it if you have instructed it to do so. Otherwise, it will invite you to claim any refund via its website and specify a bank account to which the refund is to be credited.
You may find the European Patent Guide, provided by EPO, explaining how to get a European patent, here.
You may find the Euro-PCT Guide, provided by EPO here.
Sources:
Official Website of European Patent Office, http://www.epo.org, Date: 14.09.2020
Official Website of World Intellectual Property Organization, http://www.wipo.int, Date: 14.09.2020