Grant procedure before the European Patent Office: Difference between revisions

Add links
From Wikipedia, the free encyclopedia
Browse history interactively
← Previous editNext edit →
Content deleted Content added
VisualWikitext
m →‎Substantive examination: more specific link
Line 27: Line 27:
=== Substantive examination ===
=== Substantive examination ===
{{EPC requirements}}
{{EPC requirements}}
The substantive examination of European patent applications includes the examination of [[patentability]] of the claimed [[invention]], <ref> {{EPC Article|52|1}} </ref> i.e. whether the invention is not excluded as [[patentable subject-matter|unpatentable subject-matter]] by policy, <ref> {{EPC Article|52|2) and (3}} and {{EPC Article|53}} </ref> whether the invention is [[novelty (patent)|new]], <ref> {{EPC Article|54}} </ref> [[inventive step and non-obviousness|involves an inventive step]], <ref> {{EPC Article|56}} </ref> and is [[industrial applicability|susceptible of industrial application]]. <ref> {{EPC Article|57}} </ref> In addition, the invention must be [[disclosure of the invention under the European Patent Convention|sufficiently diclosed]] in the application, <ref> {{EPC Article|83}} </ref> and the [[claims under the European Patent Convention|claims must be clear and concise]]. <ref> {{EPC Article|84}} </ref>
The substantive examination of European patent applications includes the examination of [[patentability]] of the claimed [[invention]], <ref> {{EPC Article|52|1}} </ref> i.e. whether the invention is not excluded as [[patentable subject-matter|unpatentable subject-matter]] by policy, <ref> {{EPC Article|52|2) and (3}} and {{EPC Article|53}} </ref> whether the invention is [[novelty (patent)|new]], <ref> {{EPC Article|54}} </ref> [[inventive step under the European Patent Convention|involves an inventive step]], <ref> {{EPC Article|56}} </ref> and is [[industrial applicability|susceptible of industrial application]]. <ref> {{EPC Article|57}} </ref> In addition, the invention must be [[disclosure of the invention under the European Patent Convention|sufficiently diclosed]] in the application, <ref> {{EPC Article|83}} </ref> and the [[claims under the European Patent Convention|claims must be clear and concise]]. <ref> {{EPC Article|84}} </ref>


Unless the application is directly ready for grant, communications under {{EPC Article|96|2}} are issued by the Examining Division and notified to the applicant or the appointed representative. <ref> {{EPC Rule|81|1}} {{old fact}} <!-- To be converted to EPC 2000 --> </ref> In such communications, the Examining Division invites the applicant to reply within a given period, <ref> {{EPC Article|96|2}} </ref> by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate. <ref> {{EPC Rule|51|2}} {{old fact}} <!-- To be converted to EPC 2000 --> </ref> If amendments are filed, the amendments must not extend the content of the application as filed, or, in other words, there must not be any [[added subject-matter]]. <ref> {{EPC Article|123|2}} </ref> In that context, the applicant is master of its own application in that the decision to amend or not, and how to amend the application, is a decision of the applicant alone (although the Examining Division may apply pressure to have amendments made). <ref name="T 1099/06"> EPO Board of Appeal decision [http://legal.european-patent-office.org/dg3/pdf/t061099eu1.pdf T 1099/06], Reasons 6. </ref>
Unless the application is directly ready for grant, communications under {{EPC Article|96|2}} are issued by the Examining Division and notified to the applicant or the appointed representative. <ref> {{EPC Rule|81|1}} {{old fact}} <!-- To be converted to EPC 2000 --> </ref> In such communications, the Examining Division invites the applicant to reply within a given period, <ref> {{EPC Article|96|2}} </ref> by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate. <ref> {{EPC Rule|51|2}} {{old fact}} <!-- To be converted to EPC 2000 --> </ref> If amendments are filed, the amendments must not extend the content of the application as filed, or, in other words, there must not be any [[added subject-matter]]. <ref> {{EPC Article|123|2}} </ref> In that context, the applicant is master of its own application in that the decision to amend or not, and how to amend the application, is a decision of the applicant alone (although the Examining Division may apply pressure to have amendments made). <ref name="T 1099/06"> EPO Board of Appeal decision [http://legal.european-patent-office.org/dg3/pdf/t061099eu1.pdf T 1099/06], Reasons 6. </ref>

Revision as of 20:30, 12 October 2008

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent applications, [1] the examination of formalities, [2] the establishment of a search report, [3] the publication of the application, [4] its substantive examination, [5] and the grant of a patent, [6] or the refusal of the application, [7] in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. [8] The patents granted in accordance with the EPC are called European patents. [9]

In other words, the grant procedure before the EPO is the procedure leading to the grant of a European patent [6] or to the refusal to grant a European patent. [7] The procedure starts with the filing of an application [1] and ends with the grant of a European patent [6] or the refusal of the patent application [7] by the EPO, or the withdrawal of the application by the applicant, or its deemed withdrawal. [10] The prosecution of European patent applications until grant typically takes several years. [11]

Main procedural steps

Filing

EPO headquarters at Munich

European patent applications can be filed at the EPO at Munich, Germany, at The Hague, Netherlands, [12] at Berlin, Germany, [13] or "if the law of a Contracting State so permits, at the central industrial property office or other competent authority of that State". [14] European patent applications cannot be validly filed at the EPO in Vienna, Austria. [15]

Within one month after the filing of an application, a filing fee and a search fee must be paid. [16] If the application contains more than ten claims at the time of filing, claim fees are due. [17]

European patent applications must be filed in one of the three official languages of the EPO, i.e. in English, French or German. [18] However, some applicants are allowed to file European patent applications in other specific languages, the so-called "admissible non-EPO languages", provided that a translation in English, French or German is filed afterwards in due time. [19] The official language of the EPO in which the application is filed or, when the application has been filed in an "admissible non-EPO language", the language of the filed translation, is used as the language of the proceedings. [20]

Formalities examination

Establishment of a search report

The Search Divisions of the EPO establish search reports, named "European search reports", on the basis of the claims, "with due regard to the description and any drawings". [21] The European search report established for a patent application is transmitted to the applicant together with copies of any cited documents. [22]

"The search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable (...). Knowledge of the prior art forms the basis for examination of the application by the examining divisions. It is also important for applicants, giving them a basis for deciding whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted." [23]

Designation of States and request for examination

Substantive examination

Legal requirements applicable to European patent applications and patents
Note: The above list of legal requirements is not exhaustive.

The substantive examination of European patent applications includes the examination of patentability of the claimed invention, [24] i.e. whether the invention is not excluded as unpatentable subject-matter by policy, [25] whether the invention is new, [26] involves an inventive step, [27] and is susceptible of industrial application. [28] In addition, the invention must be sufficiently diclosed in the application, [29] and the claims must be clear and concise. [30]

Unless the application is directly ready for grant, communications under Article 96(2) EPC are issued by the Examining Division and notified to the applicant or the appointed representative. [31] In such communications, the Examining Division invites the applicant to reply within a given period, [32] by correcting the "deficiencies noted and [amending] the description, claims and drawings", where appropriate. [33] If amendments are filed, the amendments must not extend the content of the application as filed, or, in other words, there must not be any added subject-matter. [34] In that context, the applicant is master of its own application in that the decision to amend or not, and how to amend the application, is a decision of the applicant alone (although the Examining Division may apply pressure to have amendments made). [35]

During the examination phase, oral proceedings may take place at the request of the EPO or at the request of the applicant. [36] They are held before the Examining Division itself, [37] in Munich or the Hague, [38] and are not public, [39] in contrast to oral proceedings in opposition, which are public unless very particular circumstances apply. [40] The right to oral proceedings is a specific and codified part of the procedural right to be heard. [41] A decision is often taken at the end of the oral proceedings.

Decisions by Examining Divisions to refuse a European patent application, like any other final decisions of first instance divisions, are appealable. [42]

Communication under Rule 71(3) EPC and grant

If the Examining Division considers that a European patent may be granted, it issues the communication under Communication under Rule 71(3) EPC. [43] By issuing such communication, the Examining Division informs the applicant of the intention to grant a patent based on the prosecuted application. [44] The claims must then be translated in the other two official languages of the European Patent Office, and fees for grant and printing must be paid. [44] If the applicant pays the fees for grant and printing and files the translation of the claims in due time, he is deemed to have been approved the text intended for grant. [44] If not, the European patent application is deemed to be withdrawn. [44] The time limit for paying the fees for grant and printing, and for filing the translation of the claims is four months. [44] This time limit is non-extendable. [45][46]

After grant

Once granted, a European patent is enforceable on a country-by-country basis.[47] In addition, once the 9-month opposition period is terminated, third parties wanting to invalidate a European patent must institute revocation proceedings in each country where the patent is in force. In addition, once a European patent is granted or more precisely within three months (or six months for Ireland) from the date of grant, the patent must be translated in an official language of each country in which the patentee wants patent protection. If the translation of the European is not provided to the national patent office within the prescribed time limit, the patent "shall be deemed to be void ab initio in that State". [48]

Additional considerations and special cases

Renewal fees

Observations by third parties

After the publication of a European patent application, anyone can file observations regarding the patentability of the invention which is the subject to the application. [49] This is a form of public participation in the examination of patent applications.

Divisional applications

A divisional application of a European patent application can be filed for any pending application [50] up to the day preceding the mention of grant of the European patent, but not including the date of grant. [51] European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, [52] or Berlin. It may also be filed using the so-called epoline online filing software. The filing of a European divisional application with a national authority has no effect in law. [53]

Euro-PCT applications

Article 150 EPC

PACE programme

The Programme for accelerated prosecution of European patent applications or PACE program ...

BEST programme

The Bringing Examination and Search Together programme or BEST programme establishes a reorganisation of the EPO's examination procedure.

Responsibilities within the EPO

An Examining Division is made up of three people; the search report is drawn up by the Primary Examiner from the Examining Division. [citation needed]

Representation

Main article: Representation before the European Patent Office

Notes and references

  1. ^ a b Article 90 EPC
  2. ^ Article 91 EPC
  3. ^ Article 92 EPC
  4. ^ Article 93 EPC
  5. ^ Article 96 EPC
  6. ^ a b c Article 97(2) EPC
  7. ^ a b c Article 97(1) EPC
  8. ^ Article 4(3) EPC
  9. ^ Article 2(1) EPC
  10. ^ The application may for instance be deemed withdrawn under Article 96(3) EPC, if the applicant fails to respond to a communication of the Examining Division in due time.
  11. ^ Richard Howson, Points and prizes, or how to Play Your Cards Right at the European Patent Office, Journal of Intellectual Property Law & Practice, 2007 2(3):170-173; doi:10.1093/jiplp/jpl237
  12. ^ Article 75(1)(a) EPC
  13. ^ Decision of the President of the European Patent Office dated 10 May 1989 on the setting up of a Filing Office in the Berlin sub-office of the European Patent Office, OJ 1989, 218.
  14. ^ Article 75(1)(b) EPC
  15. ^ Notice from the European Patent Office dated 4 March 1992 concerning the Vienna sub-office, OJ 1992, 183, Important Notice.
  16. ^ Article 78(2) EPC
  17. ^ Rule 45(1) EPC (previously Rule 31(1) EPC 1973)
  18. ^ Article 14(1) EPC
  19. ^ Article 14(2) EPC. "In due time" means in this case "within three months after the filing of the European patent application, but no later than thirteen months after the date of priority". In the case of a European divisional application, or in the relatively rare case of a new European patent application under Article 61(1)(b) EPC, "the translation may be filed at any time within one month of the filing of such application", Rule 6(1) EPC [needs update] .
  20. ^ Article 14(2) EPC
  21. ^ Article 92(1) EPC
  22. ^ Article 92(2) EPC
  23. ^ Board of Appeal of the EPO, Decision of Technical Board of Appeal 3.5.01 dated 20 October 2006 T 1242/04 – 3.5.01, Reasons 8.2, OJ EPO 7/2007, p. 421
  24. ^ Article 52(1) EPC
  25. ^ Article 52(2) and (3) EPC and Article 53 EPC
  26. ^ Article 54 EPC
  27. ^ Article 56 EPC
  28. ^ Article 57 EPC
  29. ^ Article 83 EPC
  30. ^ Article 84 EPC
  31. ^ Rule 81(1) EPC [needs update]
  32. ^ Article 96(2) EPC
  33. ^ Rule 51(2) EPC [needs update]
  34. ^ Article 123(2) EPC
  35. ^ EPO Board of Appeal decision T 1099/06, Reasons 6.
  36. ^ Article 116(1) EPC
  37. ^ Article 18(2)(third sentence) EPC
  38. ^ Decision T 1012/03 of December 1, 2006, catchword 2.
  39. ^ Article 116(3) EPC
  40. ^ Article 116(4) EPC
  41. ^ "The right to oral proceedings according to Article 116 EPC is a specific and codified part of the procedural right to be heard according to Article 113(1) EPC." in Decision T 1012/03 of December 1, 2006, Reasons 25.
  42. ^ Article 106 EPC
  43. ^ Guidelines C VI 2.5, Communication under Rule 71(3)
  44. ^ a b c d e Rule 71(3) EPC, formerly Rule 51(4) EPC 1973.
  45. ^ Guidelines C VI 14.1, Communication under Rule 71(3)
  46. ^ Special edition No. 5 OJ EPO, page 122.
  47. ^ "Any infringement of a European patent shall be dealt with by national law." Article 64(3) EPC
  48. ^ Article 65 EPC
  49. ^ Article 115 EPC
  50. ^ Rule 25(1) EPC [needs update]
  51. ^ Decision J 7/04 of November 9, 2004, Reasons 3.
  52. ^ Article 76(3) EPC
  53. ^ Guidelines A IV 1.3.1

External links

Retrieved from "https://en.wikipedia.org/w/index.php?title=Grant_procedure_before_the_European_Patent_Office&oldid=244839957"