Patents

A European patent application may be filed with the European Patent Office.

If the law of a Contracting State permits so, and subject to the dispositions regarding Divisional Patent Applications, applications may be also filed with the central industrial property office or other competent authority of that State, which shall have the same effect as if it had been filed on the same date with the European Patent Office.

• The divisional application, however, shall be filed directly with the European Patent Office.
  • Only in respect of subject-matter which does not extend beyond the content of the earlier application as filed.
  • It shall be deemed to have been filed on the date of filing of the earlier application.
  • It shall enjoy any right of priority.

That disposition shall not preclude the application of legislative or regulatory provisions that, in any Contracting State, govern inventions which, owing to the nature of their subject-matter, may not be communicated abroad without the prior authorization of the competent authorities of that State; or prescribe that any application is to be filed initially with a national authority, or make direct filing with another authority subject to prior authorisation.

Requirements of a European patent application:

A European patent application shall contain:

• A request for the grant of a European Patent:

The applicant shall designate all the Contracting States party to the EPC at the time of filing of the European Patent Application in the request for grant of a European Patent.

The designation of a Contracting State may be subject to the payment of a designation fee; and it may be withdrawn at any time up to the grant of the European Patent.

• A description of the invention:

The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.

Additionally, the European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept; and it shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

• One or more claims:

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

• Any drawings referred to in the description or the claims
• An abstract:

The abstract only serves the purpose of providing technical information about the invention; it may not be taken into account for any other purpose, in particular for interpreting the scope of the protection sought or to be considered as part of the state of the art when analyzing novelty.

The European patent application shall also satisfy the requirements laid down in the Implementing Regulations. The date of filing of a European patent application shall be the date on which the requirements laid down in the Implementing Regulations are fulfilled.

Fees:

A European patent application shall be subject to the payment of the filing fee and the search fee. If the filing fee or the search fee is not paid in due time, the application shall be deemed to be withdrawn.

Renewal fees: Renewal fees for the European patent application shall be paid to the European Patent Office in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. If a renewal fee is not paid in due time, the application shall be deemed to be withdrawn.

The obligation to pay renewal fees shall terminate with the payment of the renewal fee due in respect of the year in which the mention on the grant of the European patent is published in the European Patent Bulletin.

Priority right:

If an applicant 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;
• Any Member of the World Trade Center Organization
• Any industrial property authority who recognises that a first filling made with the European Patent Office gives right to a right of priority under conditions equivalent to those laid down in the Paris Convention

In respect of the same invention, shall enjoy a right of priority during a period of twelve months from the date of filing of the first application.

Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements, including this Convention, shall be recognized as giving rise to a right of priority.

• A “regular national filing” shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.

What happens if the first application has been withdrawn, abandoned or refused?

If the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, a  subsequent application in respect of the same subject-matter as that previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority.

Claiming priority:

An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and any other document required, in accordance with the Implementing Regulations.

Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest day of priority.

• If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements which are included in the application or applications whose priority is claimed.
• Even if certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application but are specifically disclosed in the documents of the previous application as a whole, priority may be granted.
• If granted, the date of priority shall count as the date of filing of the European patent application for the dispositions related with the state of the art and the right to a European patent for independent inventions.

Procedure up to grant:

Examination on filing and as to formal requirements:

The European Patent Office (EPO) shall examine, in accordance with the Implementing Regulations, whether the application satisfies the requirements for the accordance of a date of filing.

• If a date of filing cannot be accorded following the aforementioned examination, the application shall not be dealt with as a European patent application.
• If the European patent application has been accorded a date of filing, the EPO shall examine whether the following requirements have been satisfied:
  • It shall be filed in one of the official languages of the EPO (English, French or German) or filed in any other language AND translated into one of those official languages in due time.
  • It shall contain:
    • A request for the grant of a European patent;
    • A description of the invention;
    • One or more claims;
    • Any drawings referred to in the description or the claims;
    • An abstract
  • It shall designate the inventor.

Where applicable, it shall also

• • File a declaration of priority and any other document required, if the applicant desires to take advantage of the priority of a previous application.

If the EPO notes that there are deficiencies which may be corrected, it shall give the applicant an opportunity to correct them, but if any deficiency noted in the examination and related with the formal requirements  is not corrected, the European patent application shall be refused unless a different legal consequence is provided for by the Convention. Where the deficiency concerns the right of priority, this right shall be lost for the application.

Then, the EPO shall draw up and publish a European search report in respect of the European patent application on the basis of claims, with due regard to the description and any drawings; and 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; the EPO shall publish the European patent application.

If the decision to grant the patent becomes effective before the expiry of the eighteen-months period, the European patent application shall be published at the same time as the specification of the European Patent.

The EPO shall examine on request whether the European patent application and the invention to which it relates meet the requirements of the Convention. The request shall not be deemed to be filed until the examination fee has been paid.

The application shall be deemed to be withdrawn if:

• The applicant doesn’t made the request for examination in due time; or
• If the applicant fails to reply in due time to any communication from the Examining Division

If the examination that the application or the invention to which it relates does not meet the requirements of the Convention, the Examining Division shall invite the applicant, as often as necessary, to file his observations and amend the application.

The applicant shall be given at least one opportunity to amend the application of his own volition; but (i) the patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed, nor (ii) the European patent to extend the protection it confers.

If the Examining Division is of the opinion that the European patent application or the invention to which it relates does not meet the requirements of this Convention, it shall refuse the application unless the Convention provides for a different legal consequence.

If the Examining Division is of the opinion that the European patent application and the invention to which it relates meet the requirements of the Convention, it shall decide to grant a European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled. This decision shall take effect on the date on which the mention of the grant is published in the European Patent Bulletin.

After the mention of the grant of the European patent has been published in the European Patent Bulletin, the EPO shall publish the specification of the European patent as soon as possible.

Opposition and limitation procedure:

What if I want to oppose to the grant of a patent?

Any person may give notice to the EPO of opposition to a patent within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin.

The Notice of Opposition shall not be deemed to have been filed until the opposition fee has been paid. It applies to the European patent in all the Contracting States in which the patent has effect.

Parties to the opposition proceedings: the Opponents as well as the Proprietor of the patent.

If a person provides evidence that in a Contracting State, following a final decision, he has been entered in the patent register of such State instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State. The previous proprietor and the person making the request shall not be regarded as joint proprietors unless both so request.

What are the grounds for opposition?

• The subject-matter of the European patent is not patentable if:
  • It is a discovery, a scientific theory or a mathematical method,;
  • It is an aesthetic creation;
  • It is a scheme, a rule or a method for performing mental acts, playing games or doing business, and programs for computers;
  • It is a presentation of information
  • It is related with:
    • If the commercial exploitation of an invention would be contrary to “ordre public” or morality. Such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States.
    • Plant or animal varieties or essentially biological processes for the production of plants or animals (except for microbiological processes or the products thereof).
    • Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
  • It is not new, does not involve an inventive step or is not susceptible of industrial application.
• The european patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
• The subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed by a non-entitled person beyond the content of the earlier application as filed.

If the opposition is admissible, the Opposition Division (OD) shall examine whether at least one ground for opposition prejudices the maintenance of the European patent. The OD shall invite the parties to file observations on communications from another party or issued by itself as often as necessary.

The proprietor of the patent can amend the patent through those communications. After all of this process, the OD will decide:

1. To revoke the European patent, if at least one ground for opposition prejudices the maintenance of the European patent.
2. To maintain the patent as amended, if it meets the requirements of the EPC after the amendments made by the proprietor of the European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled.
3. To revoke the patent, if it do not meet the requirements of the EPC after the amendments.

If the European patent is maintained as amended, the EPO shall publish a new specification of the European patent as soon as possible after the mention of the opposition decision has been published in the European Patent Bulletin.

Costs incurred shall be beared by each party to the opposition, unless decided otherwise by the OD for reasons of equity. The Implementing Regulations lay down a procedure for fixing costs, and any final decision of the EPO related with cost fixation shall be dealt with in the same way as a final decision given by a civil court of the State in which enforcement is to take place.

Intervention of the assumed infringer:

Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him or, (b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.

An admissible intervention shall be treated as an opposition. Therefore, the aforementioned rules are applicable in the same way.

• Request for limitation or revocation:

The proprietor can request, with the EPO, to revoke or limit the European Patent by an amendment of the claims. The request, however, may not be filed while opposition proceedings in respect of the European patent are pending.

Once the request is filed, the EPO shall examine whether the requirements for limiting or revoking the European patent have been meet. If the request meets these requirements, the EPO shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. The requirements, as stated by Rule 92, are:

• The request shall be filed in writing in one of the official languages of the EPO. It may also be filed in an official language of a Contracting State, provided that a translation is filed in one of the official languages of the EPO, following the rules regarding translation.
• It shall contain:
  • Particulars of the proprietor making the request and an indication of the Contracting States for which the requester is the proprietor of the patent
  • The number of the patent whose limitation or revocation is requested, and a list of the Contracting States in which the patent has taken effect;
  • Where appropriate, the names and addresses of the proprietors of the patent for those Contracting States in which the requester is not the proprietor of the patent, and evidence that the requester is entitled to act on their behalf in the proceedings;
  • Where the requester has appointed a representative, particulars of the representative.

This decision shall apply to the European patent in all Contracting States in respect of which it has been granted, and shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.

If the EPO decides to limit the European patent, it shall publish its amended specification  as soon as possible, after the mention of the limitation has been published in the European Patent Bulletin.

Appeals procedure:

Which kind of decisions can be appealed?

Decisions from the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division. It shall have suspensive effect, which means that the contested decision has no legal effect until the appeal is resolved.

If a decision does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.

The right to file an appeal against decisions relating to the apportionment or fixing costs in opposition proceedings may be restricted in the Implementing Regulations.

Who is entitled to appeal? Who can be a party in an appeal proceeding?

Any party adversely affected by a decision is entitled to appeal it. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

When do I have to file my Notice of appeal?

The notice of appeal shall be filed within two months of notification of the decision, and within four months of notification, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.

Who examines the appeal?

• Interlocutory revision:

Unless the appellant is opposed by another party to the proceedings, the department whose decision is contested shall make an interlocutory revision of the statement of grounds. If that department considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings.

If the appeal is not allowed within three months of receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

• Examination of appeals:

If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. Following the examination as to the allowability of the appeal, the board of Appeal shall decide on the appeal. The Board of Appeal may either:

• Exercise any power within the competence of the department which was responsible for the decision appealed; or
• Remit the case to that department for further prosecution.

If the Board of Appeals remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. If the decision under appeal was taken by the Receiving Section, the Examining Division shall also be bound by the ratio decidendi of the Board of Appeal.

The role of the Enlarged Board of Appeal:

The Board of Appeal has two different roles.

First, it shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required to (i) ensure uniform application of the law or if (ii) a point of law of fundamental importance arises. In those procedures, the parties would be the same as in the appeal proceedings; and the decision of the Enlarged Board of Appeal shall be binding on the Board of Appeal in respect of the appeal in question.

Second, the Enlarged Board of Appeal reviews any petition filed by a party, adversely affected by the decision of the Board of Appeal, who wants to appeal that decision. The petition may only be filed on the following grounds:

1. If the members of the Board of Appeal had any personal interest on the case, or if they were previously involved as representatives of one of the parties, or if they participated in the decision under appeal; or if the member took part on the decision despite being excluded under the corresponding procedure;
2. The Board of Appeal included a person not appointed as a member of the Boards of Appeal;
3. If a decision is not only based on grounds or evidence on which the parties concerned have had an opportunity to present their comments, or if the decision is not taken in relation only with the text submitted to it, or agreed by the applicant or the proprietor of the patent.
4. Any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
5. A criminal act that may have had an impact on the decision, impact established under the conditions laid down in the Implementing Regulations.

The petition for review shall not have suspensive effect; and shall be filed in a reasoned statement. If the petition is based on the reasons 1 to 4, the petition shall be filed within two months of notification of the decision of the Board of Appeal; while, if based on 5, it shall be filed within two months of the date on which the criminal act has been established and in any event no later than five years from notification of the decision of the Board of Appeal. The petition shall not be deemed to have been filed until after the prescribed fee has been paid.

The Enlarged Board of Appeal shall examine the petition for review. If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal in accordance with the Implementing Regulations.

If a person has in good faith used or made effective and serious preparations for using an invention which is the subject of a published European patent application or a European patent in the period between the decision of the Board of Appeal and publication in the European Patent Bulletin of the mention of the decision of the Enlarged Board of Appeal on the petition, may without payment continue such use in the course of his businesses or for the needs thereof.

Common provisions governing procedure:

• All of the EPO’s decisions shall be based on grounds or evidence on which the parties have had an opportunity to present their comments.
• Third parties (which means, not parties to the proceedings) are allowed to present observations concerning the patentability of the invention to which the application or patent relates.
• The means of giving or obtaining evidence are (but are not restricted to):
  • Hearing the parties
  • Requests for information
  • Production of documents
  • Hearing witnesses
  • Opinions by experts
  • Inspection
  • Sworn statements in writing
• Decisions, summonses, notices and communications shall be notified by the EPO of its own motion in accordance with the Implementing Regulations. Notification may, where exceptional circumstances so require, be effected the intermediary of the central industrial property offices of the Contracting States.
• Request for further processing: An applicant may request further processing of the European patent application if he fails to observe a time limit (under the compliance of certain circumstances defined in the Implementing Regulations).
• Re-establishment of rights: If an applicant or proprietor who was unable to observe a time limit in spite of having take all due care required by the circumstances, the EPO shall re-establish his rights upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress. If the aforementioned conditions are met, the EPO shall grant the request.
• As long as the amendment is not made to extend the application beyond its content as filed, or as to extend the protection it confers, the European patent application can be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. The applicant shall be given at least one opportunity to amend the application of his own volition.
• Regarding prior art information, the EPO may invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. The patent application shall be deemed to be withdrawn if the applicant fails to reply in due time to that invitation.
• In the absence of procedural provisions on the Convention, the EPO shall take into account the principles of procedural law generally recognized in the Contracting States.