Q&A: Patents at the EPO

Patent protection in Europe may be sought either nationally or, since 1978, via the European Patent Office (EPO) under the European Patent Convention (EPC). The EPC establishes a centralised procedure for the grant of patents on the basis of a single application. A European patent may be validated to take effect in any of the designated contracting states. Currently, there are 38 contracting states and, additionally, two so-called "extension" countries that have not acceded to the EPC but in which protection can be obtained via a European patent application.

1. What is the procedure for filing patent applications in your jurisdiction?

A European patent may be sought by a regional designation of Europe in a PCT application or by filing a European patent application either directly with the EPO or via a national office competent to receive European patent applications.

A European patent application may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it, irrespective of nationality and place of residence or business.

The date of filing of a European patent application is the date on which the documents filed by the applicant contain: i) an indication that a European patent is sought; ii) information identifying the applicant or allowing the applicant to be contacted; and iii) a description of the invention or reference to a previously filed application. Although it is not mandatory to use the EPO Request for Grant form to obtain a filing date, it must be submitted subsequently.

The European patent application may be filed in any language, though if the application is not filed in one of the official languages of the EPO (English, French or German) a translation into one of these languages needs to be filed within two months of filing the application. The filing language (or, where appropriate, the language of the translation) becomes the language of proceedings and any amendments made to the application or the European patent must be drawn up in that language.

The presence of one or more claims is not a requirement for obtaining a filing date. If no claims are present on filing, the EPO will provide a two-month term within which to submit claims. However, since the claims normally provide the broadest definition of the invention, it is strongly recommended that claims be present in the application documents as originally filed.

Rather than filing a description (and possible claims and drawings), the applicant may make reference to a previously filed application. This reference must comply with the requirements of Rule 40(2) EPC and a certified copy of the referenced application must be filed within two months of filing the application.

A European patent application must be filed in written form, so in electronic form via the EPO's online filing system, in person, by post or by fax. It cannot be filed by e-mail, telegram, telex or teletext.

2. How long will it take to register a patent and what are the standard costs?

On average, a granted European patent is published about 43 months after the application was received, though the processing times in different fields of technology varies between 35 months in vehicles and general technology to 57 in biotechnology (2009).

For applicants who want their applications processed rapidly, the EPO offers the PACE programme under which applicants can make a written request for accelerated prosecution. The EPO does not publish requests for accelerated search or examination and they are excluded from file inspection, provided they are made on a separate sheet of paper.

A European patent application is subject to the payment of a filing fee and a search fee. As of January 1, 2012, the filing fee is €190 (a reduction of €85 is applicable if the application is filed online) and the search fee is €1105. The filing fee and the search fee are to be paid within one month of filing. If the application contains more than fifteen claims, a claims fee amounting to €210 per claim for the sixteenth to the fiftieth claim is incurred. Each claim in excess of fifty incurs a claims fee of €525. The claims fee is to be paid within one month of filing the first set of claims.

The examination fee (€1480) and the designation fee (€525) are to be paid within six months of publication of the search report. The examination fee will be reduced by 20% if the applicant files the request for examination in an admissible non-EPO language.

Grant of a European patent is conditional on payment of the fee for grant and publishing (€830).

Renewal fees are due in respect of the third and each subsequent year, calculated from the date of filing. The third-year renewal fee is €420, this amount rising to €1420 for the tenth and each subsequent year.

Once a European patent is granted, it becomes essentially a bundle of national patents. To have effect in a national contracting state, the European patent must be validated in that state. Most states demand that at least the claims of the European patent be translated into an official language of that state. Accordingly, validation costs will be dependent on the volume of text to be translated, as well as the official fees levied by the national authority. Once validated, renewal fees are paid directly to each national office rather than to the EPO.

3. What is the scope of patent protection?

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. If its subject matter is a process, protection is extended to products directly obtained by that process. Any infringement of a European patent is dealt with under national law.

Generally, the exclusive right conferred by a patent implies that no one except the proprietor of the patent may, without the proprietor's consent, use the invention for commercial purposes by: (i) making, offering, putting on the market or using a product protected by the patent or importing or possessing such a product for these purposes; (ii) using a process which is protected by the patent or, knowing, or it being obvious from the circumstances, that the use of the process is prohibited without the consent of the proprietor, offering the process for use in that country; (iii) offering, putting on the market, or using products made by a process protected by the patent or importing or possessing the product for these purposes.

4. Is there substantive examination and if so what is typically the nature and extent of correspondence with the patent examiner?

Yes. The nature of the correspondence is primarily formal, though telephone conferences and informal interviews between the applicant and the examiner are often possible.

Since the formalisation of the BEST project (Bringing Examination and Search Together), the search examiner is also responsible for the substantive examination of the application. The search examiner draws up a so-called extended European search report consisting of a European search report and a non-binding opinion on whether the application and the invention to which it relates meet the requirements of the EPC. The opinion is not published together with the search report, but becomes available to the public by way of file inspection after publication of the application.

If the applicant decides to proceed further with the application, substantive observations on any objections raised in the extended European search report must be filed before the expiry of the time limit for requesting examination. The applicant may also amend the description, claims and drawings within this period.

Once a request for examination has been filed, the examining division assumes responsibility for the application and examines, in the light of the extended search report and the applicant's response thereto, whether the application and the invention to which it relates meet the requirements of the EPC. If the examiner responsible within the examining division identifies objections to the application, a first communication is issued with a four-month term (extendible by two months on request) within which to respond. No further amendments to the application documents may be made without the examining division's consent. However, amendments are accepted which address the objections raised in the communication provided that these amendments do not occasion new objections.

If, after receiving the response to the first communication, the examiner still has objections, he may issue a further communication or contact the applicant by telephone. Should he deem it expedient, he may issue a summons to attend oral proceedings before the examination division. In this respect it is to be noted that the applicant himself may request oral proceedings at any time.

Once the application is in a form suitable for grant, the examining division will issue a communication informing the applicant of the text in which it intends to grant a patent and inviting him to pay the fee for grant and publishing and to file a translation of the claims in the other two official languages of the EPO. The applicant is given a non-extendible term of four months to perform these acts. Once these acts have been performed, the decision to grant a European patent will be issued.

5. What are the requirements on obviousness and inventive step?

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

In assessing the inventive step the so-called problem-and-solution approach is applied. This approach involves the following main steps:

1. determining the closest prior art (CPA);
2. assessing the technical effects achieved by the claimed invention as compared to the CPA;
3. defining the technical problem to be solved as the object of the invention to achieve these effects; and
4. considering whether or not the claimed invention, starting from the closest prior art and in view of the objective technical problem, would have been obvious to the skilled person at the effective date (in other words, the date of filing or, when priority is claimed, the priority date).

The CPA is determined as the prior art document which is deemed to be the most promising springboard for an obvious development resulting in the claimed subject matter.

The objective technical problem to be solved is arrived at by firstly comparing the claimed subject matter with the CPA to establish any distinguishing features. These distinguishing features can be structural or functional. Thereafter, the technical effects that the distinguishing features impart on the claimed subject matter are identified. In other words: what can the claimed subject-matter do that the closest prior art cannot? The derived effects are then transposed into a statement of problem – the objective technical problem to be solved. The statement of objective problem must, however, be so formulated as not to contain pointers to the solution.

Inventive step can only be supported by technical features.

Whether the claimed subject matter involves an inventive step depends on whether the skilled person, when starting from the closest prior art and being faced with the objective problem to be solved, would be motivated (be it on the basis of his common general knowledge or other prior art) to modify the closest prior art in such a manner as to arrive within the ambit of the claim.

6. What types of inventions or ideas can be patented? Are there any notable or unusual exceptions?

European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

In order to be patentable, the claimed subject matter must have technical character.

A non-exhaustive list of what does not constitute an invention under the EPC is provided in Article 52(2) EPC and includes discoveries, aesthetic creations, methods for doing business, programs for computers and presentations of information.

Exceptions to patentability are listed in Article 53 EPC and include inventions contrary to "ordre public", plant or animal varieties and methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Case law emphasises that exceptions and exclusions to patentability must be construed narrowly.

7. How can you appeal a denied application? Are there any time limits on making an appeal?

A decision to refuse an application may be appealed by filing a notice of appeal within two months from notification of the written decision of the examining division. The fee for appeal (€1180) is to be paid within this period. A written statement setting out the grounds of appeal is due within four months from notification of the written decision.

8. Is it possible to file pre-grant or post-grant oppositions and if so how do these work?

The EPC provides for a post-grant opposition procedure.

Notice of opposition may be filed within nine months of the publication of the mention of the grant of a European patent. An opposition fee (€705) must be paid within this period.

Any person other than the proprietor has the right to file an opposition. The EPO accepts a straw man as opponent provided that the use of a straw man does not circumvent the law.

Opposition may only be filed on the grounds that:

• the patent's subject-matter is not patentable within the terms of Article 52 to 57 EPC;
• the patent does not disclose the invention sufficiently clearly and completely for it to be carried out by a skilled person;
• the patent's subject-matter extends beyond the content of the application as filed.

Notice of opposition must be filed in writing in a reasoned statement that indicates the facts, evidence and arguments presented in support of the opposition grounds.

Immediately after expiry of the opposition period, the proprietor is given a four-month term (extendible by two months) within which to file observations and, where appropriate, amendments to the patent. Amendments may only be made that are occasioned by grounds for opposition, including grounds not raised by the opponents.

The opposition division then examines whether the grounds for opposition prejudice the maintenance of the European patent. If necessary it will invite the parties to file observations on its or other parties' submissions within a period which it specifies.

In most cases oral proceedings are held, either at the request of one or more of the parties or at the instance of the EPO. If oral proceedings are to be held, the EPO issues a summons together with an annex setting out the points which, in the opposition division's view, need to be discussed. The annex normally includes the opposition division's non-binding preliminary opinion on the positions adopted by the parties. The opposition division also sets a final date for filing written submissions or amendments prior to the oral proceedings. The opposition division expects to be able to pronounce its decision at the end of the oral proceedings.

The decision of the opposition division will be either to reject the opposition, revoke the patent or maintain the patent in amended form. If oral proceedings have been held, the written decision is normally issued several weeks after the oral proceedings. Notification of the written decision triggers a two-month term within which a disadvantaged party may appeal.

9. What is the process for modifying patents?

A proprietor may request the revocation or limitation of his patent at any time after grant, except if opposition proceedings in respect of the European patent are pending. Requests must be filed directly with the EPO and are subject to the payment of a fee (€475 for revocation and €1050 for limitation).

Since the term "limitation" means a reduction in the scope of protection conferred by the claims of the patent, a request for limitation must include a complete set of amended claims and, if appropriate, an adapted description and drawings. If the request for limitation is admissible, the examining division will examine whether the amended claims constitute a limitation with respect to the previous claims. The claims will also be examined for clarity and possible added subject matter. If there are any deficiencies, the proprietor is invited to correct them within two months.

If the request for limitation is allowable, the proprietor is invited to pay the fee for an amended specification (€65) and to submit translations of the claims into the other two official languages. The European patent specification as limited will be published and the decision to limit the patent takes effect on the date on which it is published in the Bulletin. Its effect is to limit the patent ab initio

10. Is there anything else about the filing system in your jurisdiction that patentees should be aware of?

Following the publication of a European patent application, any third party may file observations concerning the patentability of the invention to which the application or patent relates. Such observations may be filed anonymously.

11. Enforcement

Since any infringement of a European patent is dealt with by national law, the EPO plays no role in enforcement matters unless it is asked by a national court to give a technical opinion concerning the European patent which is the subject of an infringement or revocation action.

Andrew Hammond

Andrew is a founding partner of Valea AB and a European patent attorney. He has a degree in mechanical engineering and has been working in IP since 1983, initially as an examiner at the European Patent Office and since 1990 in private practice in Sweden. Most of his time is spent in post-grant patent proceedings. He is frequently in Munich representing clients before opposition divisions and the boards of appeal of the European Patent Office. He is also heavily involved in several global litigation cases. Andrew is a CEIPI-tutor and regularly holds lectures and seminars on all aspects of European patent procedures.