Request for examination
The request for examination (English "examination request") is a patent grant procedure at the German Patent and Trademark Office ( "DPMA") and the European Patent Office ( "EPO") necessary and also in the process according to the Patent Cooperation Treaty ( "Patent Cooperation Treaty" - " PCT ”) possible request to the competent office so that the latter begins and carries out the examination of a patent application for the requirements for patenting.
overview
In order for a patent to be granted for an invention, a corresponding patent application must be submitted to the competent office
- the state of the art applicable to them must first be determined, and
- then the requirements for patenting will be examined, also with regard to the previously researched state of the art.
The official examination after the search must be initiated by the examination request. It is chargeable.
In a legal sense, the application for an examination and the payment of fees are different processes. In jargon, however, one usually means both when one speaks of filing a request for examination. If the fee is not paid, the request for examination is deemed not to have been submitted.
Effect of the request for examination
The examination procedure in the narrower sense is initiated with the examination request. It ends by decision of the competent authority or due to withdrawal of the registration (different in the PCT procedure - see below). The examination procedure to be carried out in response to a valid request for examination includes the issuing of notices at the discretion of the competent body and, if necessary, the scheduling of a hearing or oral hearing as well as the resolution of the competent body.
In response to the request for examination, the examiner responsible for the application at the competent office will review the application for all requirements that apply to the patentability of an application and will notify the applicant of the result in writing in the form of a reply ("examination notification") or a resolution. If no search request was previously submitted to the DPMA during the proceedings, or if a search request was generally not yet processed, the search must be carried out now.
The examination encompasses more formal criteria such as the clarity of the application, but essentially also the examination of the applicable patent claims to determine whether they describe a materially patentable invention compared to the previously researched prior art.
The first examination notification in response to the request for examination can not be a rejection decision due to the need to respect the principle of the right to be heard . On the other hand, an immediate decision to grant is possible, although this rarely occurs in practice.
It can take a few weeks or even a few years, usually a few months, from submitting the application for examination to receiving the first examination report. If the request for examination for a German patent application is filed immediately with the application, the patent office is required (“should”) to prepare the first examination notice including the search result within eight months and to inform the applicant of the result.
A sent examination notification usually sets a deadline within which the applicant has to respond in a qualified manner.
details
Procedure at the DPMA, legal basis
German procedural law allows the search request and the request for examination to be filed simultaneously with the filing of the German patent application or later, together or one after the other. If the request for examination is submitted without a previous search request, the latter is deemed to have been submitted.
The request for examination, i.e. indirectly also the search request, must be filed no later than seven years after the filing date of the patent application, otherwise the patent application is deemed to be withdrawn. Third parties can also submit the request for examination, but must then also pay the fee for this. The request for examination cannot be withdrawn.
The official fee for the search request is 300 € (as of January 2019), for the later request for examination 150 € (as of January 2019), if both are submitted at the same time, a total of 350 € (as of January 2019).
Procedure at the EPO, legal basis
In procedural law at the EPO, the search is not specifically requested, as this is already included in the originally filed request for grant. But the fee due for the research must be paid initially. In contrast, the request for examination can be submitted later, depending on the procedure.
The official fee for the application for examination is € 1,635 (as of January 2019).
PCT procedure, legal basis
The procedural law under the PCT requires filing the search request at the same time as filing the international patent application and paying the fee due for this. In contrast, the application for an international preliminary examination can be submitted a few months later. But it does not have to be asked.
The examination in the PCT procedure cannot lead to the grant of a patent; it ends with a result that can be understood by an expert.
Other countries
In principle, the request for examination must only be submitted in patent systems that provide for the examination of a patent application (not e.g. France). Germany allows you to wait up to seven years before submitting an application for an examination. It's three years in Japan and China.
See also
Individual evidence
- ↑ see § 43 PatG for the search request and § 44 PatG for the examination request
- ↑ see Art. 78 and R. 17 (2) EPC for the search
- ↑ see Art. 94 (1) and R. 70 ff EPC for the request for examination
- ↑ see Art. 15 PCT and R. 16 in the Implementing Regulations for the PCT for searches
- ↑ see Art. 31 PCT and R. 58 in the Implementing Regulations for the PCT for the request for examination
