1 / 34

Patent Application Procedures in Europe

Patent Application Procedures in Europe. by Dr. Ulla Allgayer Patent Attorney in Munich Germany. KRAMER BARSKE SCHMIDTCHEN. Europe – geographical. KRAMER BARSKE SCHMIDTCHEN. Europe – political. Members of the EC. Candidates . KRAMER BARSKE SCHMIDTCHEN.

kosey
Download Presentation

Patent Application Procedures in Europe

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Patent Application Procedures in Europe by Dr. Ulla Allgayer Patent Attorney in Munich Germany

  2. KRAMER BARSKE SCHMIDTCHEN Europe – geographical

  3. KRAMER BARSKE SCHMIDTCHEN Europe – political Members of the EC Candidates

  4. KRAMER BARSKE SCHMIDTCHEN Harmonizationof the Patent law Founding of a European Patent Organisation (EPO) in 1973 with the task to facilitate the granting procedure Article 2 EPC: The European patent shall in each of the Contracting States for which it is granted, have the effect of … a national patent granted by that state.

  5. KRAMER BARSKE SCHMIDTCHEN Europe – EPOMembers • 30 Contracting States: (AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT,LU, MC, NL, PL, PT, RO, SE, SI, SK, TR) • 5 Extension States: (AL, HR, LT, LV, MK)

  6. KRAMER BARSKE SCHMIDTCHEN Pre-administrative phase Inventor´s rights (e.g. employee´s inventions) for not yet filed patents; Applications by persons not having the right to the patent National Regulations Disputes are solved by national authorities Administrative Core Phase Granting procedure; Oppositions European Patent Convention (EPC) + Implementing Regulations European Patent Office (EPO) Post-administrative phase Nullity, Infringement, European Patent as an object of property National Regulations Disputes are solved by national authorities

  7. KRAMER BARSKE SCHMIDTCHEN • Even though there are some „guidelines“ for the national courts • how to interpret a European Patent in the post administrative phase, • only the administrative core phase is unitary. • Therefore: • Patents can be attacked most easily as long as they are in • the administrative core phase with effect for all contracting states; • Transfers, name changes etc. can be easily recorded in this phase; • After grant (opposition) the effect of any measures is only national.

  8. KRAMER BARSKE SCHMIDTCHEN Obtaining Patent Protection in Europe • International (PCT) Application • designating EP (selection of EP contracting states not neccessary) • designating one or more European countries (designation of BE, CY, FR, GR, IE, IT, MC, NL, SI leads to EP application) • EP Application • selection of EP contracting states in which protection is sought not neccessary upon filing • National Patent Application • selection of states in which protection is sought upon filing NATIONAL (INDEPENDENT) PATENTS

  9. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent • Filing date Language: EN, DE, FR • Claiming priority • Priority of a previous application can only be claimed once ??? Formal Examination Search

  10. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent • Filing date • Language: EN, DE, FR • Claiming priority • Priority of a previous application can only be claimed once ??? • Search request (accelerated search possible, PACE program) • Fees: Filing fee, Search fee, Claim fees (for claims more than 10)

  11. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent Filing date (claiming priority) Formal Examination Search Stage European Search Report 18 months after priority BEST, EESR Publication of the Application (electronically as A1, A2) Publication of the European Search Report (together with application (A1) or separately (A3)) Approx. 1 year after filing for applications with priority claim • Within 6 months after publication of the Search Report: • Designation of contracting states (max. 7 designation fees) • Request for substantive Examination (fee for examination • request; accelerated Examination possible, PACE)

  12. KRAMER BARSKE SCHMIDTCHEN

  13. KRAMER BARSKE SCHMIDTCHEN When can amendments be filed? Rule 86 EPC: (1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided. (2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings. (3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the Examining Division. 1st Office Action Examination Request …further Office Action(s) Filing Date ESR response R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent

  14. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent (ctnd.) Office Action(s), Response(s): Examination as to unity, clarity, novelty, inventive step … Relevant prior art: 1st Office Action about 0.5-1 year after entering examination stage • all publications prior to the priority date of the application, independent of their nature (written, orally, use) • with respect to novelty additionally all EP applications having a relevant date before the relevant date (filing date or priority date) of the respective application but published afterwards and designating the same states

  15. KRAMER BARSKE SCHMIDTCHEN

  16. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent (ctnd.) Office Action(s), Response(s): Examination as to unity, clarity, novelty, inventive step … Possibly amendments Strict handling of requirement of original disclosure Informal Interwiew with the Examiner Personally or by phone Oral proceedings Third party observations possible 1st Office Action about 0.5-1 year after entering examination stage

  17. KRAMER BARSKE SCHMIDTCHEN • Problem solution approach for asessment of inventive step: • Identification of the „closest prior art“ • Identification of the differing features • Determination of the objective problem solved by these features • Definition of the objective object • Could-would approach: • Is there a document suggesting the missing features? (Can the skilled • person combine these documents and arrive at the claimed solution?) • Is there any motivation for the skilled person combining these • documents? (Would the skilled person combine these documents)

  18. KRAMER BARSKE SCHMIDTCHEN European Claim drafting • Multiple dependent claims are allowed and favorable (count as 1 claim) • Only one independent claim of same category (apparatus, method, use) • two part form, reference numbers

  19. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent (ctnd.) Office Action(s), Response • Communication under R. 51(4) EPC • Applicant is informed of proposed text for grant Filing of divisional applications possible • Approval/Disapproval within usually 4 months: • filing translation of claims in two EPC languages • fee for grant Grant of a European Patent; mentioned in European Patent Bulletin

  20. KRAMER BARSKE SCHMIDTCHEN If applicationis refused: Possibility of appeal Appeals are handled by the EPO Boards of Appeal • They are independent within the EPO • Two technically qualified members • One legally qualified member

  21. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN The way to get a EP Patent (ctnd.) Grant of a European Patent; mentioned in European Patent Bulletin • Validation of the patent in one or more designated states • translation of the patent specification • publication fee SK GB DE HU FI BE NL FR …

  22. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN Opposition • Filing of an Opposition within 9 months after mention of grant (about 6%-10% of granted EP-patents): • two instances (Opposition division of EPO, Boards of Appeal) • can be filed by anybody; opponent position is not transferable • 1,5 to 2,5 years per instance • revocation/maintenance valid for all states • plural oppositions by different parties are commonly trated • Third party observations possible Grounds for opposition: • The subject matter of the European patent is not patentable • The invention is not disclosed in a manner sufficiently clear • Subject matter extends beyond content of application as originally filed

  23. KRAMER BARSKE SCHMIDTCHEN Trap situation: Amendment during substantive examination This amendment turns out not to be sufficiently supported by original disclosure It cannot be kept in the claims, because this would contravene the requirement that the application must not comprise subject matter extending beyond the content of the application as originally filed It cannot be removed from the claims, because this would broaden the scope of the claims Revocation of the patent !!!

  24. DE GB IT … CH PT KRAMER BARSKE SCHMIDTCHEN Opposition Opposition proceedings end • payment of annuities • nullity suits • infringement suits • …. GB SK BE HU FI NL DE FR …

  25. KRAMER BARSKE SCHMIDTCHEN Priority Can a priority of an application validly be claimed more than once for EP patent applications? FR 1 26. March 1987 19. June 1987 FR 2 02. March 1988 EP 1: claim1, claim2, description 03. March 1988 EP 2: claim2, description

  26. KRAMER BARSKE SCHMIDTCHEN Priority Can a priority of an application validly be claimed more than once for EP patent applications? FR 1 26. March 1987 19. June 1987 FR 2 If priority claim is invalid: EP1 is novelty destroying for EP2 (Art. 54(2) EPC) 02. March 1988 EP 1: claim1, claim2, description 03. March 1988 EP 2: claim2, description

  27. KRAMER BARSKE SCHMIDTCHEN T 998/99 L´Oréal: EP2 was considered not claiming validly priority of FR1 Article 87(1) EPC does not permit to claim the same priority when applying in an identical country for several applications concerning the same invention. EP2 received filing date as valid date EP1 was novelty destroying for EP2

  28. KRAMER BARSKE SCHMIDTCHEN Soulution FR 1 26. March 1987 FR 2 19. June 1987 EP: claim1, claim2, description 26. March 1988 Divisional Applications EP 1: claim1, claim2, description EP 2: claim2, description

  29. KRAMER BARSKE SCHMIDTCHEN Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 1 Embodiment 3 Embodiment 4 Embodiment 2 Embodiment 4 Embodiment 5 Embodiment 1 Embodiment 2 Embodiment 6 Embodiment 1 Embodiment 2 Embodiment 1 Embodiment 3 Embodiment 6

  30. KRAMER BARSKE SCHMIDTCHEN Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 1 Embodiment 3 Embodiment 4 Embodiment 2 Embodiment 4 Embodiment 5 Embodiment 1 Embodiment 2 Embodiment 6 Embodiment 1 Embodiment 2 Embodiment 3 Embodiment 6 Embodiment 1 Embodiment 2 Embodiment 1 Embodiment 3 Embodiment 6

  31. KRAMER BARSKE SCHMIDTCHEN BEST and EESR Former situation: Oppositions Appeals Formal Examination Search Substantive Examination Enlarged Board of Appeal EPO The Hague (NL) EPO Munich (DE)

  32. KRAMER BARSKE SCHMIDTCHEN Bring Examination and Search Together (BEST) Term X EP 9999999 Y US 9877987 Y CH 87765677 …. Art. 52, 54 … Formal Examination Search Substantive Examination EPO The Hague (NL) EPO Munich (DE)

  33. KRAMER BARSKE SCHMIDTCHEN When can amendments be filed? Rule 86 EPC: (1) Before receiving the European search report the applicant may not amend the description, claims or drawings of a European patent application except where otherwise provided. (2) After receiving the European search report and before receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend the description, claims and drawings. (3) After receipt of the first communication from the Examining Division the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the Examining Division. 1st Office Action Examination Request …further Office Action(s) Filing Date ESR response R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent

  34. KRAMER BARSKE SCHMIDTCHEN Extended European Search Report (1.July 2005): R44a EPC (1)The European Search Report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of this Convention, unless a Communication under Rule 51, paragraph 2 or paragraph 4, can be issued. (2) The opinion under paragraph 1 shall not be published together with the search report. EESR = ESR + „written opinion“(Content of 1st Office Action) X EP 9999999 Y US 9877987 Y CH 87765677 …. Art. 52, 54 … Examination Request 1st Office Action EESR Filing Date response …further Office Action(s) R 86(1): No preliminary amendments R 86(2): amendments possible R 86(3): One amendment R 86(3): Amendments only with consent

More Related